Holland USA, Inc. v. Gopromosdirect
Claim Number: FA1002001306646
PARTIES
Complainant is Holland USA, Inc. (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett,
P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gopromosdirect.com>,
registered with Godaddy.com, 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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 4, 2010; the
National Arbitration Forum received a hard copy of the Complaint on February 5, 2010.
On February 8, 2010, Godaddy.Com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <gopromosdirect.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 February 16, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 8, 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 postmaster@gopromosdirect.com by
e-mail.
A timely Response was received and determined to be complete on March 8, 2010.
An Additional Submission was received from Complainant on March 15, 2010
and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on March 22, 2010
and determined to be timely and complete pursuant to Supplemental Rule 7.
On March 16, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that Respondent’s domain name <gopromosdirect.com> is
confusingly similar to Complainant’s GOPROMOS mark. Complainant also contends that Respondent has
no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent
registered and is using the domain name in bad faith.
B. Respondent
Respondent denies that its domain name is confusingly similar to
Complainant’s GOPROMOS mark. Respondent
also denies the contention that it has no rights or legitimate interests in the
disputed <gopromosdirect.com>
domain name. Respondent contends that it
registered and is using that domain name in good faith.
C. Additional Submissions
In its Additional Submission, Complainant contends that Respondent by
admitting that it is not commonly known by the disputed domain name has thus
admitted it lacks rights or legitimate interests in the domain name. Complainant asserts that Respondent had
either constructive or actual notice of Complainant’s mark, registered the
disputed domain name in bad faith, and is using the domain name to divert
Internet users to its website in an effort to market its competing promotional
products.
In its Additional Submission, Respondent contends that it is commonly
known by the disputed domain name, even though the website is the website for
its company, European Promotions Inc.
Respondent denies that it had constructive notice of Complainant’s mark,
denies that the parties are competitors, and asserts that its domain was
registered and is being used in good faith.
FINDINGS
Complainant registered its GOPROMOS mark with
the United States Patent and Trademark Office (“USPTO”) with an application
effective as of September 1, 1999.
Complainant’s predecessor registered its <gopromos.com> website
in February 1998 and transferred the domain name to Complainant in 2004. Complainant registered the domain name with
its current registrar during that year.
Complainant offers promotional items through its website. Respondent’s domain name, <gopromosdirect.com>
differs from Complainant’s website domain name only by including the additional
term “direct.” Respondent registered the
disputed domain name on May 28, 2004.
Respondent also markets promotional items
through its website. Snapshots of the
respective websites provided by Complainant demonstrate that the promotional
items offered by the parties are similar.
Internet users who reach Respondent’s website are given a telephone
number to order products which connects callers to Respondent’s European
Promotions Inc. office. Unlike
Complainant’s website, Respondent’s website does not provide for online
purchases.
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 rights in its GOPROMOS mark
through its registration of the mark with the USPTO, effective September 1,
1999. Respondent’s domain name <gopromosdirect.com>
incorporates Complainant’s mark and adds the word “direct” and the top-level
domain “.com.” These features are
insufficient to distinguish Respondents’ domain name from Complainant’s
mark. See Gen. Elec. Co. v.
Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000). Respondent’s domain name is confusingly
similar to Complainant’s mark within the meaning of Policy ¶4(a)(i).
Because Respondent’s domain name <gopromosdirect.com>
is confusingly similar to Complainant’s mark, the burden shifted 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).
Respondent has offered no evidence that it was commonly known by the
disputed domain name prior to its registration.
In fact, Respondent asserts that the name of its business is European Promotions
Inc. and merely used the disputed domain name to distinguish its offerings from
wholesalers from its offerings to wholesalers under a domain name
<trendy.net>. Respondent clearly
is not commonly known by the disputed domain name within the meaning of Policy
¶4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June
17, 2003). Yet the disputed domain name
takes Internet users to Respondent’s website where promotional items are
offered that compete with those offered by Complainant. Respondent’s use of the disputed domain name
is not a legitimate or fair use within the meaning of Policy ¶4(c)(iii). See Bank of Am. Fork v. Shen,
FA 699645 (Nat. Arb. Forum June 11, 2006). Respondent lacks rights or legitimate
interests in the domain name under Policy ¶4(a)(ii).
The fact that Respondent has registered and uses the disputed domain name to market promotional items that compete with Complainant’s offerings, without rights or legitimate interests in the domain name, is evidence of bad faith registration and use. Complainant’s trademark registration gave Respondent constructive notice of Complainant’s rights. It is also likely that Respondent had actual notice of Complainant’s mark due to the apparent uniqueness of the mark and the use by Respondent of the disputed domain name to attract Internet users to Respondent’s website where competing promotional items are offered. See Complexions Rx, Inc. v. Julie Hogan, D2002-0484 (WIPO July 19, 2002). The Panel concludes that Respondent registered and uses the domain name in bad faith within the meaning of ¶4(b)(iv).
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 <gopromosdirect.com> domain name be TRANSFERRED
from Respondent to Complainant.
Mark McCormick, Panelist
Dated: March 30, 2010
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