national
arbitration forum
DECISION
Deborah Dawn Monahan d/b/a Organizing 101 v. Debra
Milne c/o Productivity Squared Inc.
Claim Number: FA0911001292995
PARTIES
Complainant is Deborah Dawn Monahan d/b/a Organizing
101 (“Complainant”), represented by Justin J. Steinbock, Texas, USA. Respondent is Debra Milne c/o
Productivity Squared Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <organizing101.com>, registered with Dotster, Inc.
PANEL
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.
Honorable Paul A. Dorf (Ret.)as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on November 4, 2009;
the National Arbitration Forum received a hard copy of the Complaint on November 9, 2009.
On November 4, 2009,
Dotster, Inc. confirmed by e-mail to the
National Arbitration Forum that the <organizing101.com> domain name is
registered with Dotster, Inc. and that
Respondent is the current registrant of the name. Dotster, Inc.
has verified that Respondent is bound by the Dotster,
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 12,
2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December
2, 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@organizing101.com
by e-mail.
On December 16, 2009, a Response was
filed with the forum by the Respondent.
This Response was received after the deadline and was not in hard
copy. The Response was not timely filed
and, therefore, not in compliance with ICANN Rule #5. That being the case, the Response was not
accepted by the Arbitrator.
On December 8, 2009, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.), 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.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<organizing101.com> domain
name is identical to Complainant’s ORGANIZING 101 mark.
2. Respondent
does not have any rights or legitimate interests in the <organizing101.com> domain name.
3. Respondent
registered and used the <organizing101.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
On February
9, 2000, Complainant, Deborah Dawn
Monahan d/b/a Organizing 101, filed an assumed name certificate with the
Denton County Clerk of Denton County,
Texas for the assumed name
“Organizing 101.” Sometime between
February 9 and July
18, 2000, Complainant and Respondent spoke about Complainant’s
business called “Organizing 101.” On February 13, 2007,
the United States Patent and Trademark Office (“USPTO”) issued Complainant a
registration of its ORGANIZING 101 mark for use in connection with Complainant
organization services business.
Respondent, Debra Milne c/o
Productivity Squared Inc., operates an organization services business in the United States and Canada. On July 18, 2000, Respondent registered the <organizing101.com>
domain name. The disputed domain name
redirects Internet users to Respondent’s official website resolving from the
<professionalorganizers.com> domain name.
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 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.
Identical and/or Confusingly Similar
Complainant must first establish that it has rights to the
mark included in the disputed domain name.
Traditionally, the registration of a mark with the USPTO warrants a
finding of established rights in a mark.
However, the registration of the <organizing101.com>
domain name antedates
the filing date of Complainant’s ORGANIZING 101 mark. Under Policy ¶ 4(a)(i) registration of a
trademark is not necessary to establish that Complainant has rights in the
mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
see also Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)
(“The Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”).
Complainant registered to use the ORGANIZING 101 mark as its
assumed name in the state of Texas
on February 9,
2000. Complainant has
operated an organization service business under the ORGANIZING 101 name
continuously since that time.
Additionally, Complainant had conversations with Respondent regarding
Complainant’s assumed name which predated Respondent’s
registration of the disputed domain name on July 18, 2000. Consumers have come to identify
the ORGANIZING 101 mark with Complainant and its organizing service. The Panel finds that this continuous use is
sufficient to establish secondary meaning and thus, common law rights in the ORGANIZING
101 mark under Policy ¶ 4(a)(i). See Am. Anti-Vivisection Soc'y. v. "Infa
dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that
the fact that the complainant held the domain name prior to the respondent’s
registration, as well held a pending trademark application in the mark,
evidences rights in the domain name and the mark therein contained); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat.
Arb. Forum Mar.
13, 2003) (holding that the complainant established rights in the
descriptive RESTORATION GLASS mark through proof of secondary meaning
associated with the mark); see also
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established).
The <organizing101.com>
domain name incorporates Complainant’s ORGANIZING 101 mark in its entirety,
omitting the space between the words of the mark and adding the generic
top-level domains (“gTLDs”) “.com.” The
Panel finds that the disputed domain name is identical to Complainant’s ORGANIZING
101 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop.
Assocs., FA 937650 (Nat.
Arb. Forum Apr.
30, 2007) (finding that the elimination of spaces between terms and
the addition of a gTLD do not establish distinctiveness from the complainant’s
mark under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Rights or Legitimate Interests
The initial burden under Policy ¶ 4(a)(ii) is on Complainant
to prove that Respondent does not have any rights or legitimate interests in
the disputed domain name. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests pursuant to the factors provided in Policy ¶ 4(c). Also, no response has been submitted in this
case. Therefore, the Panel presumes that
Respondent has no rights or legitimate interests in the <organizing101.com> domain name; however, the Panel will still examine
the record in consideration of the factors listed under Policy ¶ 4(c). 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 CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that
the respondent’s failure to produce requested documentation supports a finding
for the complainant). The Panel finds
that Complainant has presented a prima
facie case, and the Panel now chooses to consider whether an evaluation of
all the evidence demonstrates rights or legitimate interests for Respondent
under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <organizing101.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the ORGANIZING 101 mark, and the WHOIS information identifies Respondent
as “Debra Milne c/o Productivity Squared Inc.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain name under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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.”).
The <organizing101.com>
domain name redirects Internet users to Respondent’s website, which offers
professional organization services in direct competition with services offered
by Complainant under its ORGANIZING 101 mark.
The Panel finds that this use is not 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). 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 Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003)
(finding that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
Respondent registered the <organizing101.com>
domain name on July 18, 2000. The disputed domain name, which is identical to
Complainant’s ORGANIZING 101 mark, redirects Internet users to Respondent’s
competitive website, which offers organizing services. The Panel finds that Respondent, who is
Complainant’s direct competitor, is using Complainant’s mark to disrupt
Complainant’s business. The Panel finds
this is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005)
(“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”); see
also Classic Metal Roofs, LLC v.
Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding
that the respondent registered and used the <classicmetalroofing.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet
users to the respondent’s competing website).
Respondent is using the <organizing101.com>
domain name to redirect Internet users searching for Complainant to its own
directly competing website. When
Internet users type in Complainant’s mark, they would reasonably expect to be
directed to Complainant’s website offering Complainant’s goods. When Respondent’s website appears instead,
Internet users are likely to become confused as to Complainant’s sponsorship or
affiliation with the disputed domain name and resulting website. Respondent is attempting to profit from this
confusion, which the Panel finds to be evidence of bad faith registration and
use under Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); 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).
Additionally, Complainant states that it had a conversation
with Respondent between February 9, 2000 and July 18, 2000 wherein Respondent learned Complainant was operating
a competeting business under the ORGANIZING 101 mark. The Panel finds Respondent had actual notice
of Complainant’s use of the ORGANIZING 101 mark and this is further evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb.
Forum Apr. 10,
2006) (stating that while mere constructive knowledge is
insufficient to support a finding of bad faith, where the circumstances
indicate that the respondent had actual knowledge of the complainant’s mark
when it registered the domain name, panels can find bad faith); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235
(Nat. Arb. Forum May
9, 2006) (“The Panel also finds
that there are reasonable grounds to infer that Respondent had actual notice of
Complainant’s rights in the mark as well. . ..
Respondent’s
registration of the disputed domain name with knowledge of Complainant’s
rights is further evidence of bad
faith registration and use under Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <organizing101.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.), Panelist
Dated: December 22, 2009
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