Lastar, Inc., DBA Cables To
Go v. The Cable and Wire Supplier Inc.
Claim Number: FA1001001301907
PARTIES
Complainant is Lastar, Inc., DBA Cables To Go (“Complainant”), represented by David
Shough, of Law Office of David A. Shough,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <cablegodirect.com>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 7, 2010. With its Complaint, Complainant also chose to
proceed entirely electronically under the new Rules for Uniform Domain Name
Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by
submitted an “opt-in” form available on the Forum’s website.
On January 8, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <cablegodirect.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.Com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 11, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of January 28, 2010 by which Respondent could
file a Response to the Complaint, via e-mail to all entities and persons listed
on Respondent’s registration as technical, administrative, and billing
contacts, and to postmaster@cablegodirect.com. Also on January
11, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on January 29, 2010. Respondent chose to opt-in to the electronic
process with its submission and submitted its Response in electronic copy only.
Complainant’s Additional Submission was received on February 3, 2010 in
compliance with Supplemental Rule 7
On February 5, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 <cablegodirect.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CABLES TO GO mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. The domain name at issue is not identical or confusingly similar to any trademark in which Complainant has rights.
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent did not register and is not using the domain name at issue in bad faith.
C. Additional Submissions
The
Complainant filed an Additional Submission which noted that Respondent is its
direct competitor who has copied the style of Complainant’s website. Respondent’s own website has unseen but
embedded code which refers to Complainant by name. These facts, says Complainant, establish its
case.
FINDINGS
Complainant
holds registration of its CABLES TO GO mark with the
Further,
Complainant asserts that it has not licensed or otherwise authoized Respondent to use its registered mark for any
purpose. Finally, Complainant says that
the facts above establish that the
Respondent registered and has used the domain name at issue in bad faith.
The Respondent
correctly ponts out that <cablegodirect.com> is not exactly like Complainant’s Registered mark and that
Complainant operates its own website using <cablestogo.com>,
thus embodying its mark. The word
“direct”, says Respondent, distinguishes
its domain from Complainant. In a
nutshell, Respondent argues that it is ligitimately
in the cable sales business, there is no likelihood of confusion between Complainant’s mark and <cablegodirect.com>
and this domain was not registered and has
not been used in bad faith. Respondent
claims to be commonly known by the disputed
domain name.
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.
Complainant has provided evidence of the registration of its CABLES TO GO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,038,794 issued January 10, 2006). Complainant’s registration of its CABLES TO GO mark is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The disputed domain name deletes
the letter “s” from the first word in Complainant’s mark, eliminates the word
“to” from Complainant’s mark, adds the generic term “direct,” and adds the
generic top-level domain “.com.” These
alterations do not overcome a finding of confusing similarity under Policy ¶
4(a)(i). The
Panel finds that Respondent’s <cablegodirect.com> domain name is confusingly
similar to Complainant’s CABLES TO GO mark under Policy ¶ 4(a)(i). See
Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change
the overall impression of the mark and thus made the disputed domain name
confusingly similar to it); see also Am.
Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005)
(finding the <americaneaglestores.com> domain name to be confusingly
similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22,
2000) (finding that adding the generic term “direct” on to the complainant’s
marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the
complainant, and thus the respondent’s domain names are confusingly similar); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶
4(a)(i) analysis).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel
finds that Complainant has made its prima facie case that Respondent
lacks rights and legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii), and that the burden shifts to Respondent
to show it does have rights or legitimate interests. 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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate
interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
The WHOIS information
indicates the registrant is known as “The
Cable and Wire Supplier Inc.” Complainant
contends in the Complaint and its Additional Submission that while Respondent appears to be commonly known by the
disputed domain name, it is not. Even if
Respondent appears to be commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶
4(c)(ii).
Respondent is using
the disputed domain name to sell computer, audio and visual cable products that compete with Complainant’s sales
of the same products. Respondent’s directly competing use of the
confusingly similar disputed domain name is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb.
Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name
is not a bona fide offering of goods
and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing
goods.”); see also Gardens Alive,
Inc. v. D&S Linx, FA
203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a
domain name for commercial benefit by
diverting Internet users to a website that sold goods and services similar to those offered by
the complainant and thus, was not using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or
fair use).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that sells computer, video and audio cables that compete with Complainant’s sales of the same product. Respondent’s use of the disputed domain name constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business). It appears that that Respondent is using the confusingly similar domain name to sell products that compete with Complainant and likely profiting through it. Respondent’s actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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). Respondent’s website was originally built using elements copied from the HTML code from Complainant’s <cablestogo.com> website. Additionally, the website resolving to Respondent’s disputed domain name originally copied the appearance and color scheme of Complainant’s website. This is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 <cablegodirect.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 17, 2010
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