Claim Number: FA1002001306646
Complainant is Holland USA, Inc. (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gopromosdirect.com>, registered with Godaddy.com, Inc.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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).
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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