Slickdeals, Inc. v.
Claim Number: FA0910001289878
Complainant is Slickdeals, Inc. (“Complainant”), represented by Megan E. Gray, of Gray Matters,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <slickdeals.com>, registered with Moniker.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Louis E. Condon, Petter Rindforth and David Sorkin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2009, the National Arbitration Forum received a hard copy of the Complaint on October 19, 2009.
On October 19, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <slickdeals.com> domain name is registered with Moniker and that the Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 October 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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 timely Response was received and determined to be complete on November 18, 2009.
Respondent asked for a stay in order that Respondent could submit certain issues relating to trademarks to another forum for decision. The Panel issued an order granting the stay
December 31, 2009. Thereafter, Respondent timely filed a reply January 8, 2010, withdrawing its request for a stay and asked that the Panelists decide the case.
An Additional Submission was received from Complainant on November 23, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7. An Additional Submission was received from Respondent on November 30, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7.
On December 11, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Louis E. Condon, Petter Rindforth and David Sorkin as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant had trademark rights in the term SLICKDEALS prior to Respondent’s registration of the disputed domain name in 2002. Complainant asserts that Complainant and Complainant’s mark have featured in print, on the Internet, on television, and on the radio, including numerous mentions that predate Respondent’s domain name registration. Complainant alleges “The Today Show,” CNNMoney, ABC News and Fox News have all mentioned Complainant and Complainant’s SLICKDEALS mark. Complainant contends it registered the <slickdeals.net> in 1999, and has operated its business under the SLICKDEALS mark since then. Complainant has common law rights in its SLICKDEALS mark in regards to Complainant’s business as website offering free discounts, promotional codes, reviews, and price comparisons. Complainant claims that by 2007, Complainant was receiving 84 million Internet page views per month. Complainant received a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its SLICKDEALS mark (Reg. No. 3,416,831 issued February 12, 2008). For these reasons, Complainant argues Complainant has established rights from long, continuous, and well-publicized use of the SLICKDEALS mark. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the domain name. The domain name has been registered and is being used in bad faith.
Respondent contends that the <slickdeals.com> domain name is
comprised of a common and generic terms and as such cannot be found to be
identical to Complainant’s mark.
Respondent, Chad Wright, aka WebQuest.com, Inc. is in the business of
providing pay-per-click search engines offered through his generic composite
domain names. Respondent attests that he
was not aware of Complainant’s business or virtual business when he registered
the domain name in 2002. Further,
Respondent searched the U.S. Trademark Office on-line database and did not find
any trademark applications or registrations using “slick deals” or “slickdeals.” At the time of registering and re-registering
slickdeals.com, Complainant’s marks were not registered, famous, or distinctive
and therefore, Respondent denies these allegations. Respondent is now aware of Complainant’s
C. Complainant’s Additional Submission largely reiterates the allegations made in the Complainant, while Respondent’s Additional Submission merely responds to Complainant’s Additional Submission. There do not appear to be any exceptional circumstances present that would necessitate consideration of Additional Submissions, nor do they shed any additional light upon the relevant issues before the Panel. The Panel, therefore, declines to exercise its discretion to consider the Parties’ Additional Submissions.
The Panel finds that the disputed domain name is identical to a mark in which Complaint has rights, that Respondent has no rights or legitimate interests in respect of the disputed
domain name and that the domain name has been registered and is being used in bad faith.
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 disputed domain name contains Complainant’s entire SLICKDEALS mark and simply adds the generic top-level domain (“gTLD”) “.com.” The Panel considers the domain name to be identical to Complainant’s mark for purposes of Paragraph 4(a)(i) of the Policy.
Complainant asserts that Respondent is using the disputed domain name for a website designed for the sole purpose of attracting Internet users who are seeking Complainant’s site. Complainant having made a prima facie showing that Respondent lacks rights and legitimate interests in the domain name, the burden shifts to Respondent to come forward with concrete evidence of Respondent’s rights or legitimate interests. See e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). In the Panel’s view, Respondent has not met that burden.
The Respondent is using a domain name that is identical to the Complainant’s mark to offer links to third-party websites that offer services similar to those offered by the Complainant. The evidence supports an inference that Respondent was well aware of Complainant when it registered the disputed domain name, and that it registered the name intending to profit from confusion with Complainant. The Panel concludes on this basis that Respondent registered and is using the disputed domain name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <slickdeals.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Louis E. Condon, (Ret.), Panelist
Dated: January 29, 2010
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