Fred W. Gretsch Enterprises, Ltd. v. NOLDC, Inc
Claim Number: FA0906001270597
Complainant is Fred W. Gretsch Enterprises, Ltd. (“Complainant”), represented by Mark
W.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gretschdrum.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2009.
On June 28, 2009, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <gretschdrum.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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
1, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of July
21, 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@gretschdrum.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 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant manufactures and distributes percussion instruments, particularly drums, and markets drums under the GRETSCH mark, which mark Complainant has used in commerce continuously since 1912.
Complainant has sold to the consuming public millions of dollars worth of drums under this mark in the intervening years.
Complainant has registered its GRETSCH with the United States Patent and Trademark Office (“USPTO”), including trademark Reg. No. 187,744, registered on August 12, 1924, and service mark Reg. No. 1,574,775, registered January 2, 1990.
Respondent is not commonly known by the <gretschdrum.com> domain name, nor has it ever been the owner or licensee of the GRETSCH mark.
Respondent registered the <gretschdrum.com> domain name on June 9, 2005.
The disputed domain name resolves to a website with hyperlinks to third-party websites that advertise drums in direct competition with the business of Complainant.
Respondent intended to disrupt Complainant’s business by diverting Internet users to the websites of third parties that compete with the business of Complainant.
Respondent gains commercially from the website that resolves from the disputed domain name by collecting click-through fees from the sponsored third-party websites.
Respondent’s <gretschdrum.com> domain name is confusingly similar to Complainant’s GRETSCH mark.
Respondent does not have any rights to or legitimate interests in the domain name <gretschdrum.com>.
Respondent registered and uses the <gretschdrum.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the GRETSCH mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, and that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that
Respondent’s <gretschdrum.com> domain name is confusingly similar to its GRETSCH mark. The domain
name differs from Complainant’s mark in two ways: (1) the descriptive term
“drum” has been added to the end of the mark; and (2) the generic top-level
domain (gTLD) “.com” has been added. Neither
the addition of such a descriptive term nor the addition of the gTLD “.com”
sufficiently distinguishes this domain name from the incorporated mark for
purposes of Policy ¶ 4(a)(i). See Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that the domain names
<caterpillarparts.com> and <caterpillarspares.com> were confusingly
similar to the registered trademark CATERPILLAR because “the idea suggested by
the disputed domain names and the registered trademarks is that the goods or
services offered in association with [the] domain name are manufactured by or
sold by the Complainant or one of the Complainants [sic] approved distributors.
The disputed trademarks [sic] contain one distinct component, the word
Caterpillar”). See also Brambles Indus.
Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding
that the domain name <bramblesequipment.com> is confusingly similar to a
competing mark because the combination of the two words "brambles"
and "equipment" in the domain name implies that there is an
association with a complainant’s business). Further see Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶
4(a)(i) analysis).
Respondent’s domain name is therefore
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <gretschdrum.com> domain name. Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent, that respondent has the burden of showing evidence that it does have rights to or legitimate interests in a disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). Respondent’s
failure to respond to the allegations of the Complaint permits us to conclude
that Respondent has no rights to or interests in the contested domain
sufficient to satisfy the requirements of the Policy. See BIC
Deutschland GmbH & Co. KG v.
By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights
or legitimate interests in the domain name.
We will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has rights to or interests in its domain which are cognizable under the Policy.
We begin by observing that Complainant contends, and
Respondent does not deny, that Respondent is not commonly known by the <gretschdrum.com> domain name, nor
has it ever been the owner or licensee of the GRETSCH mark. In addition, the pertinent WHOIS information
for the disputed domain name lists Respondent merely as “NOLDC, Inc.”
In light of this state of the record, we are obliged to conclude that
Respondent is not commonly known by the <gretschdrum.com>
domain name pursuant to
Policy ¶ 4(c)(ii).
See Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003):
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.” See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
We also note that there
is no dispute as to Complainant’s assertion that the website that resolves from
the <gretschdrum.com> domain name carries links to websites that
compete with Complainant’s business.
The competitive nature of Respondent’s use of the <gretschdrum.com> domain name renders this use neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <gretschdrum.com>
domain name under Policy
¶ 4(c)(iii). See Meyerson v. Speedy
Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that, where a
respondent has failed to offer any goods or services on its website other than
links to a variety of third-party websites, it was not using a domain name in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)); see also Carey Int’l, Inc. v.
Kogan, FA 486191
(Nat. Arb. Forum July 29, 2005) (holding that a respondent’s use of disputed domain
names to market limousine services competing with those of a complainant was
not a bona fide offering of goods or services under Policy ¶ 4(c)(i), because
that respondent was appropriating that complainant’s CAREY mark in order to
profit from association with the mark).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the contested
domain name to divert Internet users from Complainant’s website to the site
which resolves from the disputed domain name, presumably relying upon the
confusion caused by the similarity between the GRETSCH mark and the <gretschdrum.com> domain name. Respondent
does not deny this allegation. Complainant also contends, again without
contravention by Respondent, that Respondent intended to disrupt Complainant’s
business by diverting confused customers to the websites of third parties that
compete with Complainant. We accept
therefore these assertions, and we are accordingly forced to the conclusion
that Respondent’s disruption of Complainant’s business by advertising competing
goods as alleged means that Respondent has registered and uses the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a contested domain name to attract
Internet users to a directory website containing links to the websites of a
complainant’s commercial competitors represents bad faith registration and use of
the domain under Policy ¶ 4(b)(iii)); see also
Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business
from a complainant to a competitor’s website within the meaning of Policy ¶
4(b)(iii)).
Complainant also contends, and Respondent does not deny, that Respondent gains commercially from the website that resolves from the <gretschdrum.com> domain name, by collecting click-through fees from the third-party websites. In light of this undenied contention, we conclude that Respondent’s behavior is evidence of its registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name confusingly similar to a complainant’s mark by using it to offer links to third-party websites that featured services similar to those offered by that complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent diverted Internet users searching for a complainant to its own website, likely profiting from this activity).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <gretschdrum.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 5, 2009
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