Enesco, LLC v. Gund Inc.
Claim Number: FA0906001270851
Complainant is Enesco,
LLC (“Complainant”), represented by George
Gottlieb, of Gottlieb, Rackman & Reisman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gundfun.com>, registered with Above, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2009.
On July 1, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <gundfun.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@gundfun.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 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gundfun.com> domain name is identical to Complainant’s GUNDFUN mark.
2. Respondent does not have any rights or legitimate interests in the <gundfun.com> domain name.
3. Respondent registered and used the <gundfun.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enesco, LLC, is a well-known marketer of high-quality plush stuffed toys. Complainant is the owner of the GUNDFUN mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,354,241 issued December 11, 2007). Complainant has been using its GUNDFUN mark since 2006 in connection with its line of plush toys and hobby horses.
Respondent registered the <gundfun.com> domain name on January 28, 2009. The disputed domain name resolves to a website displaying sponsored click-through links that further resolve to the websites of Complainant’s competitors in the toy industry.
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.
Complainant has registered the GUNDFUN mark with the
USPTO. Previous panels have held that trademark
registration with the USPTO is sufficient to establish rights in a mark
pursuant to Policy ¶ 4(a)(i). Therefore,
the Panel finds that Complainant has established rights in the GUNDFUN mark
through its registration with the USPTO for the purposes of Policy ¶
4(a)(i).
Complainant contends that Respondent’s <gundfun.com> domain name is identical to Complainant’s GUNDFUN mark except for the addition of the generic top-level domain “.com.” The Panel finds the addition of a top-level domain name is irrelevant in a Policy ¶ 4(a)(i) analysis. Thus, the Panel finds the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <gundfun.com> domain name. Once Complainant presents a prima facie case outlining these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name. The Panel finds that Complainant has
presented a sufficient prima facie
case to support its allegations and that Respondent failed to submit a response
to these proceedings. Therefore, the
Panel may assume Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record
and determine whether Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); 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).
Respondent’s <gundfun.com> domain name resolves to a website featuring sponsored click-through links that divert Internet users to the websites of Complainant’s competitors. 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 identical disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Furthermore, Complainant contends that Respondent is not authorized to use its GUNDFUN mark and is not commonly known by the <gundfun.com> domain name pursuant to Policy ¶ 4(c)(ii). The pertinent WHOIS information lists the registrant as “Gund Inc.” While this information may indicate a connection between the disputed domain name and Respondent, there is no evidence in the record to substantiate this claim. Thus, the Panel may presume that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”); see also MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges
that Respondent is using a domain name, which is identical to Complainant’s GUNDFUN
mark, to attract Internet users to a
website containing links resolving to the websites of Complainant’s
competitors. The Panel concludes that
Respondent’s appropriation of Complainant’s GUNDFUN mark to divert Internet users to Complainant’s
competitors is likely disrupting Complainant’s business, and that such use
constitutes bad faith registration and use of the disputed domain name under
Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to
complainant’s competitors, as well as diverting Internet users to several other
domain names); see also David Hall Rare Coins v. Tex. Int’l Prop.
Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the
respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to
advertise goods and services of complainant’s competitors, thereby disrupting
the complainant’s business).
Complainant further
contends that Respondent’s registration and use of the identical disputed
domain name constitutes bad faith under Policy ¶ 4(b)(iv) because Respondent
intentionally attempts to attract Internet users, for financial gain, to its
domain name by creating a likelihood of confusion with Complainant and its GUNDFUN
mark.
Additionally, the disputed domain name’s resolving website contains
click-through links that further resolve to the websites of Complainant’s
competitors. The Panel presumes that
Respondent is profiting from such use through the generation of click-through
fees. Therefore, the Panel finds
that Respondent has engaged in bad faith registration and use of the <gundfun.com>
domain name under Policy ¶ 4(b)(iv). See
Asbury Auto. Group, Inc. v.
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gundfun.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 5, 2009
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