Foster and Smith, Inc. v. Domain Admin - Taranga Services Pty Ltd
Claim Number: FA1009001345109
Complainant is Foster and Smith, Inc. (“Complainant”), represented by Kourtney A. Mulcahy, of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Domain Admin - Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drsfostersandsmith.com>, registered with MONIKER ONLINE SERVICES, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2010.
On September 8, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <drsfostersandsmith.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 September 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@drsfostersandsmith.com by e-mail. Also on September 16, 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 October 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <drsfostersandsmith.com> domain name is confusingly similar to Complainant’s DOCTORS FOSTER & SMITH mark.
2. Respondent does not have any rights or legitimate interests in the <drsfostersandsmith.com> domain name.
3. Respondent registered and used the <drsfostersandsmith.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Foster and Smith, Inc., owns the exlusive rights to the DOCTORS FOSTER & SMITH mark, which it uses in connection with its animal supply and pet medication business. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DOCTORS FOSTER & SMITH mark (e.g., Reg. No. 2,524,313 issued January 1, 2002).
Respondent, Domain Admin - Taranga Services Pty Ltd, registered the <drsfostersandsmith.com> domain name on October 24, 2005. The disputed domain name resolves to a website which features links to third party competitors of Complainant.
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 contends that it has established rights in the DOCTORS FOSTER & SMITH mark. The Panel finds that registrations with a federal trademark authority are sufficient to establish rights in a mark. 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.”). Therefore, the Panel finds Complainant has established rights in the DOCTORS FOSTER & SMITH mark through its registrations with the USPTO (e.g., Reg. No. 2,524,313 issued January 1, 2002) pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <drsfostersandsmith.com> domain name is confusingly similar to Complainant’s DOCTORS FOSTER & SMITH mark. The <drsfostersandsmith.com> domain name includes Complainant’s mark by abbreviating the word “doctors,” adding an ‘s’ to the word “fosters,” and including the word “and” in place of the ampersand in Complainant’s mark. It also adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of a letter to a complainant’s mark, and the abbreviation of a word in a complainant’s mark do nothing to distinguish a disputed domain name from said mark. Preceding panels have also noted that the substitution of the word “and” for an ampersand and the addition of a gTLD render a disputed domain confusingly similar to a complainant’s mark because you cannot register a URL without having done these things. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <drsfostersandsmith.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Due to Respondent’s failure to respond to the complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the <drsfostersandsmith.com> domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). In spite of this, the Panel will nevertheless examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use the DOCTORS FOSTER & SMITH mark. The WHOIS information identifies the domain name registrant as “Domain Admin - Taranga Services Pty Ltd.” There is no other evidence set forth in the record to suggest that Respondent is commonly known by the <drsfostersandsmith.com> domain name. The Panel finds that Respondent has not established any rights or legitimate interests in the <drsfostersandsmith.com> domain name pursuant to Policy 4(c)(ii). See 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); see also 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).
Respondent uses the <drsfostersandsmith.com> domain name to direct Internet users to a commercial website offering links to competitors of Complainant. Respondent likely profits from click-through referral fees he recieves when Internet users click the links he has provided on the site. The Panel finds that this does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the disputed domain name to misdirect Internet users who are seeking Complainant’s official site, to his own site, where he displays links to Complainant’s competitors. Although Complainant does not argue it, the Panel may find that Respondent’s competing use of the <drsfostersandsmith.com> domain name is a disruption to Complainant’s business and is in bad faith pursuant to Policy 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (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 also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the <drsfostersandsmith.com> domain name to direct Internet users to a commercial site that displays pay-per-click links to Complainant’s competitors. Respondent likely benefits from the confusion he has produced by creating a website with a confusingly similar domain name to Complainant’s mark. The Panel finds that this attempt at commercial gain by playing into the misunderstanding by Internet users as to Complainant’s sponsorship of Respondent’s domain name, is in bad faith under 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
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 <drsfostersandsmith.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 27, 2010
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