national arbitration forum

 

DECISION

 

J.P. Communications, Inc. v. Mainstream Advertising c/o Joseph Nathan

Claim Number: FA0906001270452

 

PARTIES

Complainant is J.P. Communications, Inc. (“Complainant”), represented by Timothy P. Dillon, of Dillon & Gerardi, APC, California, USA.  Respondent is Mainstream Advertising c/o Joseph Nathan (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <top10wholesale.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2009.

 

On June 29, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <top10wholesale.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On July 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@top10wholesale.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <top10wholesale.com> domain name is confusingly similar to Complainant’s TOP TEN WHOLESALE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <top10wholesale.com> domain name.

 

3.      Respondent registered and used the <top10wholesale.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, J.P. Communications, Inc., is a business that specializes in providing consumers with shopping news, bargain deals, and information regarding the sale and purchasing of wholesale products.  Complainant’s search engine and directory network offers wholesalers and manufacturers the ability to transact with over 500,000 merchandise resellers each month.  Complainant has been providing  these services through the website resolving from the <toptenwholesale.com> domain name since April 1, 2005.  Complainant obtains over one million visitors per month on its website with over 200,000 registered users in the United States.  Additionally, Complainant is the owner of the TOP TEN WHOLESALE mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,264,829 issued July 17, 2007).      

 

Respondent registered the <top10wholesale.com> domain name on December 11, 2005.  The disputed domain name resolves to a website featuring click-through advertisement links to unrelated third-party websites. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the TOP TEN WHOLESALE mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). 

 

Prior to Respondent’s registration of the <top10wholesale.com> domain name, Complainant did not possess a trademark registration for its TOP TEN WHOLESALE mark.  However, Complainant argues that it has common law rights in its TOP TEN WHOLESALE mark predating Respondent’s registration of the disputed domain name.  If Complainant can demonstrate adequate common law rights in the mark, the Panel finds that this is sufficient for the purposes of a Policy ¶ 4(a)(i) analysis.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).  

 

Complainant contends that the first use of its TOP TEN WHOLESALE mark occurred on April 1, 2005.  The mark has since acquired substantial, valuable secondary meaning.  Complainant has introduced evidence of its widespread and continuous utilization of the mark in print media, advertising, and its website services since April 1, 2005.  Additionally, Complainant contends that it attracts over one million unique visitors every month with over 200,000 registered users in the United States.  The Panel finds that such widespread and continuous use, together with the widespread goodwill Complainant has acquired, establishes sufficient secondary meaning in the TOP TEN WHOLESALE mark for the purposes of Policy ¶ 4(a)(i).  Therefore, the Panel finds that Complainant has adequately established common law rights in its TOP TEN WHOLESALE mark prior to Respondent’s registration of the <top10wholesale.com> domain name pursuant to Policy ¶ 4(a)(i).  See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). 

 

Complainant contends that Respondent’s <top10wholesale.com> domain name is a typographical variant of its TOP TEN WHOLESALE mark, rendering the disputed domain name confusingly similar to its mark under Policy ¶ 4(a)(i).  The disputed domain name simply substitutes the word “ten” with the numerical equivalent, “10,” and affixes the generic top-level domain “.com.”  The Panel finds that these alterations are not sufficient to negate a finding of confusing similarity between Respondent’s <top10wholesale.com> domain name and Complainant’s TOP TEN WHOLESALE mark under Policy ¶ 4(a)(i).  Moreover, the Panel finds that the word “ten” in Complainant’s mark and the number “10” in Respondent’s <top10wholesale.com> domain name are phonetically identical, thus heightening the degree of similarity between Complainant’s mark and Respondent’ disputed domain name.  Thus, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Old Style Saloon No. 10 v. Lopez, FA 908127 (Nat. Arb. Forum Mar. 9, 2007) (“Respondent’s <saloonten.com> domain name is confusingly similar because the pronunciation and meaning of “10” in Complainant’s mark is similar to Respondent’s numerical spelling of ‘ten.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <top10wholesale.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, which the Panel finds that Complainant has done in these proceedings, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Respondent’s <top10wholesale.com> domain name resolves to a website displaying click-through advertisement links that further resolve to unrelated third-party websites.  The Panel presumes that Respondent is generating revenue from such use through the receipt of click-through fees.  Thus, the Panel concludes that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). 

 

Complainant alleges that Respondent is not commonly known by the <top10wholesale.com> domain name under Policy ¶ 4(c)(ii).  The pertinent WHOIS information identifies the registrant as “Stream Advertising c/o Joseph Nathan.”  This information suggests that Respondent is not commonly known by the disputed domain name and there is no evidence in the record to the contrary.  Therefore, the Panel concludes that Respondent is not commonly known by the <top10wholesale.com> domain name under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). 

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Respondent’s use of the <top10wholesale.com> domain name, which is confusingly similar to Complainant’s TOP TEN WHOLESALE mark, is likely to cause confusion among Internet users searching for Complainant’s wholesale services.  Specifically, Internet users could become confused as to Complainant’s affiliation, endorsement, or sponsorship of the disputed domain name and its resolving website.  Respondent presumably profits from this confusion by receiving click-through referral fees for each Internet user it redirects to other third-party websites.  The Panel finds that such registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). 

 

Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <top10wholesale.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 11, 2009

 

 

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