CliC Goggles, Inc. v. Ernesto Duarte
Claim Number: FA1006001327834
Complainant is CliC
Goggles, Inc. (“Complainant”), represented by Malcolm Wittenberg, of Bay Area Technology Law Group PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <clackglasses.com>,
registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2010.
On June 2, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <clackglasses.com> domain name is registered with Godaddy.com, Inc. and that 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 June 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@clackglasses.com. Also on June 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of a Written Notice, as defined in Rule 1. 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 <clackglasses.com> domain name is confusingly similar to Complainant’s CLIC mark.
2. Respondent does not have any rights or legitimate interests in the <clackglasses.com> domain name.
3. Respondent registered and used the <clackglasses.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CliC Goggles, Inc., sells its eyewear products,
which feature its patented magnetic connection at the bridge, online at its
<clicgoggles.com> domain name.
Complainant owns two trademark registrations for the CLIC and related
marks with the
CLIC Reg. No. 2,424,922 issued January 30, 2001 and
CLIC MED Reg. No. 3,190,173 issued December 26, 2006.
Respondent, Ernesto Duarte, registered the <clackglasses.com> domain name on April 22, 2010. The disputed domain name redirects to the <lentesclack.com> domain name, which offers eyewear products very similar to those offered by Complainant and even uses similar images.
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 owns two trademark registrations for the CLIC and related marks with the USPTO:
CLIC Reg. No. 2,424,922 issued January 30, 2001 and
CLIC MED Reg. No. 3,190,173 issued December 26, 2006.
The Panel finds that Complainant’s registration of its CLIC and related marks with the USPTO proves its rights in the mark according to Policy ¶ 4(a)(i). See 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.”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <clackglasses.com> domain name is
confusingly similar to Complainant’s CLIC mark.
Complainant contends that “clack” and “clic” are both phonetically and
visually similar. The disputed domain
name’s term “clack” varies from Complainant’s mark only by replacing the letter
“i” with the letter “a” and adding the letter “k” to the end of the word. The disputed domain name also adds the
descriptive term “glasses” and the generic top-level domain (“gTLD”) “.com” to
Complainant’s mark. The Panel finds that
the disputed domain name’s minor variations on the spelling of Complainant’s
mark are insufficient to distinguish the disputed domain name from
Complainant’s mark, especially because of the phonetic similarity between the
two. See Colibri Corp. v. Dinoia, FA 662937
(Nat. Arb. Forum May 5, 2006) (finding that the <calibri.com>
domain name was visually and phonetically similar to the complainant’s COLIBRI
mark); see also Barnes & Noble
College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25,
2002) (“The Panel further finds that the domain name <bunsandnoble.com>
is confusingly similar to the BARNES & NOBLE marks in so far as the domain
name is similar in sound to Complainant’s marks.”). The Panel finds that adding a word such as
“glasses” that is descriptive of Complainant’s business also fails to
differentiate the disputed domain name and Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5,
2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in
its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion
to complainant’s business.”); see also
Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006)
(finding that the addition of the generic term “finance,” which described the
complainant’s financial services business, as well as a gTLD, did not sufficiently
distinguish the respondent’s disputed domain name from the complainant’s mark
under Policy ¶ 4(a)(i)). The Panel also
finds that the gTLD “.com” does nothing to prevent a finding of confusing
similarity under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. The Panel, however, elects to consider the evidence in record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
The WHOIS information for the <clackglasses.com> domain name lists the registrant as “Ernesto Duarte.” Based on the failure of the WHOIS information to indicate any nominal association between Respondent and the disputed domain name and the lack of any other evidence showing an association, the Panel may find that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant asserts that Respondent is not using the <clackglasses.com> domain name in accordance with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant argues that the disputed domain redirects Internet users to the <lentesclack.com> domain name, which also sells eyewear products. In addition to operating within the same industry as Complainant, Respondent’s resolving website sells the exact same type of eyewear as Complainant: glasses with a magnetic connection at the bridge. The images used by Respondent at the <lentesclack.com> domain name are also highly similar to those used by Complainant, down to the same colors of the glasses frames. The Panel finds that using a variation on Complainant’s mark to redirect Internet users to a site not affiliated with Complainant but offering similar competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 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 Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s <clackglasses.com>
domain name redirects Complainant’s intending customers to a website offering
magnetic bridge eyewear products very similar to, and in competition with,
Complainant’s products. Such an activity
clearly disrupts Complainant’s business because Complainant’s customers are
diverted away from Complainant’s site and directed to a site where the products
are so strikingly similar that they may purchase the glasses from a competitor
rather than from Complainant. The Panel
finds that Respondent’s efforts to compete with and disrupt Complainant’s
business through its misuse of Complainant’s mark represent bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also
Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum Nov. 11,
2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant alleges that Respondent chose the word “clack” to include in the <clackglasses.com> domain name because it so similar to Complainant’s CLIC mark. Complainant also argues that Respondent attempted to make the resolving website visually similar to Complainant’s website, even including very similar images of the eyewear products offered. Complainant asserts that Respondent had no purpose in registering the disputed domain name other than to attract Complainant’s customers, mislead them about the affiliation between Complainant and Respondent, and profit from the resulting confusion and sale of similar products. The Panel finds Respondent’s behavior in this regard demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds 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 <clackglasses.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2010
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