Slickdeals, Inc. v.
Claim Number: FA0910001289878
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@slickdeals.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum