The Bill Sims Company, Inc. v. McDowell Incentives, Inc.
Claim Number: FA0908001276987
Complainant is The Bill Sims Company, Inc. (“Complainant”), represented by Michael
Dailey,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <safetybucks.com>, registered with Godaddy.com, 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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2009.
On August 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <safetybucks.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 19, 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@safetybucks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <safetybucks.com> domain name is identical to Complainant’s SAFETY BUCKS mark.
2. Respondent does not have any rights or legitimate interests in the <safetybucks.com> domain name.
3. Respondent registered and used the <safetybucks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Bill Sims Company, Inc., has used its SAFETY BUCKS mark since 1986 in connection with its business of conducting employee incentive award programs designed to promote the reduction of job accidents. Complainant has registered its SAFETY BUCKS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,173,717 issued November 21, 2006).
Respondent, McDowell Incentives, Inc., registered the disputed <safetybucks.com> domain name on November 9, 2007. The disputed domain name redirects to a website at the <ussafetyawards.com> domain name, where competing safety award services are sold. Respondent also offered to sell the disputed domain name to Complainant for $50,000 in response to Complainant’s communication with Respondent over the disputed domain name.
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 demonstrated its rights in the SAFETY BUCKS mark through its registration of the mark with the USPTO (Reg. No. 3,173,717 issued November 21, 2006) pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <safetybucks.com> domain name merely contains Complainant’s entire SAFETY BUCKS mark while removing the space in the mark and adding the generic top-level domain “.com.” The Panel finds that such changes are irrelevant under the Policy, and therefore finds the disputed domain name to be identical to Complainant’s mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Since Complainant has established a prima facie case supporting its allegations, Respondent thus bears the burden to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on the evidence within the record, there is no indication that Respondent is commonly known by the disputed domain name. The WHOIS domain name registration information lists the registrant of record as “McDowell Incentives, Inc.” As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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.”).
Respondent’s identical disputed domain name redirects to a website that offers directly competing services in the safety awards industry. Respondent therefore commercially benefits from such a competing use when it redirects Intenet users seeking Complainant’s services to Respondent’s resolving website at the identical disputed domain name. Such use does not constitute 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 therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii), respectively. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors).
Complainant contends that Respondent offered to sell the
disputed domain name to Complainant for $50,000 when Complainant contacted
Respondent over the disputed domain name.
Respondent has not submitted any evidence or made any assertions to
counter this allegation that it offered the disputed domain name for an amount
in excess of its registration costs. The
Panel therefore finds that this constitutes sufficient evidence that Respondent
further lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a
contested domain name for more than its out-of-pocket costs provided additional
evidence that Respondent had no rights or legitimate interests in the contested
domain name); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where the respondent registered the domain name with the intention of selling
its rights).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel has already found that Respondent offered to sell
the disputed domain name to Complainant for $50,000. The Panel finds that Respondent intended such
a sale of the disputed domain name both at the time of registration and beyond,
given the competing nature of the parties and the identicality between
Complainant’s mark and the disputed domain name. Respondent therefore registered and used the
disptued domain name in bad faith under Policy ¶ 4(b)(i)
by offering to sell the disputed domain name for more than its registration
costs. See Campmor, Inc. v. GearPro.com, FA
197972 (Nat. Arb. Forum
Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to
sell it to Complainant for $10,600. This demonstrates bad faith registration
and use pursuant to Policy ¶ 4(b)(i).”); see also Dynojet Research, Inc. v.
The use of the disputed domain name to resolve to a website
that provides strictly competing services demonstrates Respondent’s intent to
disrupt Complainant’s business for competitive gain. This fits the definition of, and therefore
constitutes, bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat.
Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and
used in bad faith where the respondent and the complainant were in the same
line of business in the same market area).
Finally, Respondent’s
commercial gain through the operation of a competing website at the disputed
domain name is obvious, given that Internet users seeking Complainant may end
up doing business with Respondent. The
Panel finds that Respondent intended a likelihood of confusion as to
Complainant’s endorsement of the disputed domain name and resolving website,
which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb.
Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet
users seeking the complainant’s site to its own website for commercial gain); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of the complainant).
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 <safetybucks.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: September 22, 2009
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