Bill Good Marketing, Inc. v. C I Corporation
Claim Number: FA0907001275107
Complainant is Bill Good
Marketing, Inc. (“Complainant”),
represented by James B. Belshe, of Workman Nydegger,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gorillaconvert.com>, registered with Wild West Domains, Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2009.
On July 22, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <gorillaconvert.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 18, 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 firstname.lastname@example.org by e-mail.
A Response was received by e-mail on August 21, 2009, but as no hard copy was received before the Response deadline, the Response was determined to be deficient because it was not timely and therefore not in compliance with ICANN Rule 5.
On August 25, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant registered the GORILLA mark with the U.S. Patent and Trademark Office on May 29, 2001 in connection with the marketing of educational computer software for teaching selling and presentation methods and successful marketing plans. It has also registered additional marks incorporating the GORILLA mark as the dominant feature, also for use in marketing training and education. Respondent registered the disputed <gorillaconvert.com> domain name on February 9, 2005. Adding the “.com” top level domain and the descriptive term “convert” does not make the domain name distinctive. It is confusingly similar to Complainant’s GORILLA mark. Moreover, Respondent has no rights or legitimate interests in the mark and uses it to make users who access Respondent’s website believe Respondent is affiliated with Complainant. Respondent lacks permission from Complainant to use the domain name and is not commonly known by the GORILLA mark. Finally, Respondent’s use of the domain name to divert Complainant’s consumers to Respondent’s website establishes Respondent’s bad faith registration and use.
Respondent’s main contention is that the
GORILLA mark is merely descriptive and is not distinctive. Respondent denies that the pages presented by
Complainant are from its website and asserts that its website promotes the
C. Additional Submissions
The parties made no additional submissions, although Respondent forwarded correspondence in which he attacks the Complaint as frivolous.
Respondent’s <gorillaconvert.com> domain name is confusingly similar to Complainant’s GORILLA mark. Moreover, Respondent is not commonly known by the domain name and has used it to divert Internet users looking for Complainant to Respondent’s website. Respondent used the domain name to create confusion in Complainant’s Internet customers and attract users to its website which shows links to competing products.
Respondent provided a
deficient response because it did not provide a hard copy of its response prior
to the deadline, as required by ICANN Rule 5.
Its electronic response was timely.
The panel has determined that this was a technical breach but that the
Response should be considered in order to permit the merits of the dispute to
be decided. See Strum
v. Nordic Net
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 <gorillaconvert.com> domain name incorporates Complainant’s GORILLA mark, adding only the generic top-level domain “.com” and the generic word “convert.” The addition of the top-level domain does not make the domain name distinctive. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002). Moreover, the use of the generic term “convert” does not sufficiently distinguish the domain name from Complainant’s GORILLA mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004). Complainant has established that the disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶4(a)(i).
Complainant has established a prima facie case on this issue, shifting the burden to Respondent to show it has rights and legitimate interests in the domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). The record shows that Respondent has not been authorized by Complainant to use the domain name and that Respondent is not commonly known by the disputed domain name. Despite Respondent’s contention to the contrary, the panel finds that Respondent’s website at the time the Complaint was filed was being used to provide links to sites offering educational software in competition with Complainant. This was not a legitimate noncommercial use within the meaning of Policy ¶4(a)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003).
Respondent used the disputed domain name to confuse Internet customers to divert them from Complainant’s website to Respondent’s website where they would find links to Complainant’s competitors. The panel finds that Respondent registered and used the domain name in bad faith within the meaning of Policy ¶4(a)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007); Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gorillaconvert.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: September 8, 2009
National Arbitration Forum
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