Enesco, LLC v. Sinclare Vabalon, BHG
Claim Number: FA0906001270870
Complainant is Enesco, LLC (“Complainant”), represented by Marc
P. Misthal, of Gottlieb, Rackman & Reisman, P.C.,
The domain names at issue are <gunddolly.com> and <wwwgund.com>, registered with Basic Fusion, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 29, 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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gunddolly.com> and <wwwgund.com> domain names are confusingly similar to Complainant’s GUND mark.
2. Respondent does not have any rights or legitimate interests in the <gunddolly.com> and <wwwgund.com> domain names.
3. Respondent registered and used the <gunddolly.com> and <wwwgund.com> domain names 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 and offers several
lines of these products under the GUND mark.
Complainant holds several registrations of its GUND mark with numerous
governmental trademark authorities throughout the world, including the United
States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,545,472 issued
Respondent registered the <gunddolly.com>
domain name on
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.
The Panel finds that Complainant has sufficiently established rights in the GUND mark under Policy ¶ 4(a)(i) via its several trademark registrations with the USPTO and other governmental trademark authorities. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Both of the <gunddolly.com>
<wwwgund.com> domain names contain Complainant’s entire GUND
mark and the generic top-level domain (“gTLD”) “.com.” The <gunddolly.com> domain name merely adds the
descriptive term “dolly,” which describes Complainant’s plush toy products,
while the <wwwgund.com> domain name merely adds the prefix
“www.” The Panel finds that none of
these additions to Complainant’s GUND mark sufficiently distinguish either of
the disputed domain names from Complainant’s mark. See Oki
Data Ams., Inc. v.
Therefore, the Panel finds that both of the <gunddolly.com> and <wwwgund.com> domain names are confusingly similar to Complainant’s GUND mark under Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent
lacks rights and legitimate interests in the disputed domain names. The
Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden then shifts to Respondent and
Respondent must establish that it has rights or legitimate interests in the
disputed domain names. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent is listed in the WHOIS information as “Sinclare Vabalon, BHG,” which does not indicate that Respondent is commonly known by either of the <gunddolly.com> and <wwwgund.com> domain names. Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Both of Respondent’s <gunddolly.com> and <wwwgund.com> domain names resolve to similar websites that display several hyperlinks to various third-party websites, some of which directly compete with Complainant. The Panel infers that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s use of the confusingly similar disputed domain names, along with the aforementioned hyperlinks, diverts Internet users to competing websites for commercial gain, and thus is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4 (c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using both of the <gunddolly.com> and <wwwgund.com> domain names to
redirect Internet users to Complainant’s competitors’ websites through the use
of hyperlinks displayed on the websites resolving from the disputed domain
names. The Panel finds that this
redirection disrupts Complainant’s business and constitutes bad faith
registration and use under 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 confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also
Moreover, Respondent is presumably using the <gunddolly.com> and <wwwgund.com>
domain names to collect click-through fees through the aforementioned
hyperlinks. The Panel finds that
Respondent’s use of the disputed domain names in this manner constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gunddolly.com> and <wwwgund.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: August 18, 2009
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