School Zone Publishing Company v. Zeke Armon
Claim Number: FA1001001301391
Complainant is School Zone Publishing Company (“Complainant”), represented by Jeffrey
A. Nelson, of Warner Norcross & Judd LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <the-school-zone.com>, registered with Communigal Communications Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2010.
On January 13, 2010, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <the-school-zone.com> domain name is registered with Communigal Communications Ltd and that Respondent is the current registrant of the name. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 January 15, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2010 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <the-school-zone.com> domain name is confusingly similar to Complainant’s SCHOOL ZONE mark.
2. Respondent does not have any rights or legitimate interests in the <the-school-zone.com> domain name.
3. Respondent registered and used the <the-school-zone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, School Zone Publishing Company, holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SCHOOL ZONE mark (e.g., Reg. No. 1,178,035 issued November 17, 1981) in connection with educational materials.
Respondent, Zeke Armon,
registered the disputed domain name <the-school-zone.com> on
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 asserts rights in its SCHOOL ZONE mark through
its holding of multiple registrations for the SCHOOL ZONE mark with the USPTO (e.g., Reg. No. 1,178,035 issued November 17, 1981). The Panel finds that Complainant has
established rights in the SCHOOL ZONE mark under Policy ¶ 4(a)(i) through its
registration with the USPTO. See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); see
also Miller Brewing
Complainant argues that Respondent’s <the-school-zone.com> domain name is confusingly
similar to Complainant’s SCHOOL ZONE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s SCHOOL ZONE mark because Respondent’s domain
name incorporates the entirety of Complainant’s mark, adds the word “the,” adds
hyphens, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the word
“the” to Complainant’s mark creates a confusing similarity between the disputed
domain name and Complainant’s mark. See Marriott
Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28,
2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain
names fails to make them separate and distinct, as distinguishable from
Complainant’s marks.”); see also John Fairfax Publ’ns Pty Ltd. v. Pro-Life
Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The
addition of the article ‘the’ does not significantly distinguish the domain
name from the mark for purposes of Policy ¶ 4(a)(i).”). Additionally, the Panel finds that the
addition of hyphens is irrelevant in determining confusing similarity between
the disputed domain name and Complainant’s mark. See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOIS information for the disputed domain name indicates that the registrant is “Zeke Armon.” There does not appear to be any other evidence in the record that indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name was registered on
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the confusingly
similar disputed domain name to display links to third-party websites that
compete with Complainant’s business and for which Respondent presumably
receives pay-per-click fees constitutes a disruption of Complainant’s business
pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
The Panel finds that Respondent’s use of the disputed domain
name to intentionally attract Internet users seeking Complainant’s goods and
services and redirect them to the disputed domain name in order to profit
through the receipt of pay-per-click fees is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi,
FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent
engaged in bad faith registration and use by using a domain name that was
confusingly similar to the complainant’s mark to offer links to third-party
websites that offered services similar to those offered by the complainant); see also
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 <the-school-zone.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 24, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum