Gem-Tiles v. Carlo SpemaClaim Number: FA0211000129125 PARTIESComplainant is Gem-Tiles, LLC, Orlando, FL, USA (“Complainant”) represented by Sylvia B. Clough.  Respondent is Carlo Spema, Taipei, TAIWAN (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME  The domain name at issue is <>, registered with GoDaddy Software, Inc.  PANELThe undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORYComplainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 4, 2002; the Forum received a hard copy of the Complaint on November 6, 2002. On November 5, 2002, GoDaddy Software, Inc. confirmed by e-mail to the Forum that the domain name <> is registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the name.  GoDaddy Software, Inc. has verified that Respondent is bound by the GoDaddy Software, 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 November 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 2002 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 by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.  On December 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHTComplainant requests that the domain name be transferred from Respondent to Complainant.  PARTIES’ CONTENTIONSA. ComplainantThe <> domain name is identical to Complainant’s GEM-TILES trademark. Respondent has no rights or legitimate interests in the <> domain name. Respondent registered and used the <> domain name in bad faith. B. RespondentRespondent failed to submit a Response in this proceeding. FINDINGSComplainant owns Reg. No. 2,581,874 for the GEM-TILES mark with the United States Patent and Trademark Office (“USPTO”), registration date June 18, 2002 and first use in commerce January 31, 2001.  Complainant uses the GEM-TILES mark in connection with its tile manufacturing business.  Complainant manufactures, distributes, and sells tiles made of genuine gemstones, exotic seashells, and composite tiles with a ceramic base.   Respondent registered the <> domain name on September 18, 2002.  Respondent is identified as Carlo Spema, but more significantly, Complainant discovered that Respondent is connected with an entity that Complainant attempted to conduct business with, Jumbo Pacific, Inc. (“Jumbo”).  In July 2001, Complainant entered into business negotiations with Jumbo, whereby an agreement was reached to have Jumbo manufacture sample tiles.  Complainant furnished Jumbo with the specifications for the tiles. Upon completion and delivery of the sample tiles, Complainant did not approve of the quality and the business relationship was ended.   In February 2002, Complainant discovered that Respondent, Carlo Spema, placed the sample tiles on the <> website.  Complainant discovered that Respondent was soliciting business for Complainant at the <> website without prior approval.  Subsequently, Complainant discovered that the same sample tiles were being promoted for sale on the <> website.   DISCUSSION 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 the 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. 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 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. Identical and/or Confusingly SimilarComplainant has established its rights in the GEM-TILES mark through proof of trademark registration with the USPTO. Respondent’s <> domain name contains Complainant’s entire GEM-TILES mark absent the hyphen.  The subtraction of the hyphen is inconsequential when conducting a Policy ¶ 4(a)(i) identical analysis because a hyphen has no distinguishing characteristics.  Furthermore, the addition of the generic top-level domain “.com” is also without legal significance because top-level domains are required in every domain name.  Therefore, Respondent’s <> domain name is identical to Complainant’s GEM-TILES mark.  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"). The Panel finds that Policy ¶ 4(a)(i) is satisfied. Rights or Legitimate InterestsComplainant has alleged a prima facie case and as a result a presumption arises that Respondent has no rights or legitimate interests in the <> domain name.  This presumption can be rebutted with an articulation of rights or legitimate interests on the part of Respondent.  At present, Respondent has failed to come forward with a Response and thus has not successfully rebutted the presumption.  Therefore, the Panel infers that Respondent has no such rights or legitimate interests in the <> domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, the Panel will accept all of Complainant’s allegations as true and will draw all reasonable inferences in favor of Complainant due to Respondent’s failure to challenge the Complaint.  See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true). Complainant has argued that Respondent is soliciting sales for the sample tiles, which Complainant rejected from Jumbo, at a website connected to the <> domain name.  As stated, Respondent is connected with Jumbo as Respondent initially promoted the sample tiles at the <> website.  The use of another entity’s mark to solicit sales of goods that compete with that entity is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does such behavior represent a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services). Respondent is not commonly known by the <> domain name.  Respondent is identified as Carlo Spema and has business connections with the aforementioned Jumbo.  Complainant’s business relationship with Jumbo was brief and at no time did Complainant authorize the use of its GEM-TILES mark.  Therefore, Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.   Registration and Use in Bad FaithGiven the former business relationship Complainant had with Jumbo and Respondent’s apparent working relationship with Jumbo, it is clear that Respondent had knowledge of Complainant’s interest in the GEM-TILES mark.  Respondent uses the <> domain name to resolve to a website that advertises the sample tiles Jumbo made pursuant to Complainant’s specifications.  Thus, Respondent is using Complainant’s GEM-TILES mark to offer competing goods for sale.  Such behavior with knowledge of Complainant’s interests in the mark evidences an intent to disrupt Complainant’s business.  Therefore, Respondent’s actions fall under the purview of Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where Respondent has connections with a competitor of Complainant’s digital security business and Respondent indicated that she intended to enter the same business).  Furthermore, by using Complainant’s GEM-TILES mark to denote the sale of products within Complainant’s same industry, particularly sample tiles that were made according to Complainant’s specifications, the consuming public is likely to be confused as to Complainant’s association with the resulting website.  Also, Respondent’s intent is apparently to profit from this use because Respondent solicits the sale of the sample tiles.  Therefore, Respondent’s use of the <> domain name constitutes bad faith under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <>, and created confusion by offering similar products for sale as Complainant). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.     DECISIONHaving established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED. Accordingly, it is Ordered that the domain name <> be TRANSFERRED from Respondent to Complainant.    Sandra Franklin, PanelistDated:  December 18, 2002






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