Global DNS LLC v. Vast c/o Bojan Tesanovic
Claim Number: FA1010001353984
Complainant is Global DNS LLC (“Complainant”), represented by Randall Moeller of Newman & Newman, Attorneys at Law, LLP, Washington, USA. Respondent is Vast c/o Bojan Tesanovic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carster.us>, registered with WILD WEST DOMAINS, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 21, 2010; the Forum received a hard copy of the Complaint on October 21, 2010.
On October 22, 2010, WILD WEST DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <carster.us> domain name is registered with WILD WEST DOMAINS, INC. and that Respondent is the current registrant of the name. WILD WEST DOMAINS, INC. has verified that Respondent is bound by the WILD WEST DOMAINS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <carster.us> domain name is identical to Complainant’s CARSTER mark.
2. Respondent does not have any rights or legitimate interests in the <carster.us> domain name.
3. Respondent registered and used the <carster.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Global DNS LLC, operates an online automobile information forum featuring discussions, blogs, and chat rooms. Complainant’s business operates under its registered CARSTER service mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,183,732 issued December 12, 2006).
Respondent registered the <carster.us> domain name on October 26, 2006. The disputed domain name resolves to a website providing automobile-related online content services.
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.
Given the similarity between the Uniform Domain Name Dispute Rersolution Poicy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDROP precedent as applicable in rendering its decision.
Complainant alleges it has established rights in the CARSTER mark. Previous panels have concluded that registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under UDRP ¶ 4(a)(i)). Complainant contends Policy ¶ 4(a)(i) is satisfied based on the registration of its CARSTER mark with the USPTO (e.g., Reg. No. 3,183,732 filed issued December 12, 2006). The Panel further finds that the effective date of Complainant’s trademark registration is the filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Accordingly, the Panel concludes Complainant’s registration of the CARSTER mark with the USPTO (e.g., Reg. No. 3,131,950 filed February 2, 2006 issued December 12, 2006) establishes rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to February 2, 2006.
Complainant contends Respondent’s <carster.us> domain name is identical to Complainant’s CARSTER mark. The disputed domain name incorporates Complainant’s CARSTER mark in its entirety and also includes the addition of the country code top-level domain (“ccTLD”) “.us” which Complainant alleges does not significantly distinguish Respondent’s domain name from Complainant’s CARSTER mark.. Complainant alleges this is insufficient in rendering Respondent’s disputed domain name from Complainant’s CARSTER mark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). The Panel finds Respondent’s <carster.us> domain name is identical to Complainant’s CARSTER mark under Policy ¶ 4(a)(i)
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights and legitimate interests in the <carster.us> domain name. Previous panels have found that a complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and, because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <carster.us> domain name. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <carster.us> domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <carster.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges Respondent is not commonly known by the <carster.us> domain name. Respondent has not alleged any evidence supporting a finding that it is known by that name. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS information does not contain any information that would aid the Panel in finding Respondent’s name is similar to the disputed domain name. Further, Complainant alleges that it has not authorized or licensed Respondent to use its CARSTER mark. Thus, the Panel finds that Respondent is not commonly known by the <carster.us> domain name under Policy ¶ 4(c)(iii). See 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); see also 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 UDRP ¶ 4(c)(ii) does not apply).
The disputed <carster.us> domain name resolves to a website that competes with Complainant’s online forums, chat rooms and bulletin boards used in the transmission of information in the automobile field. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iv). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also 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 [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent’s <carster.us> domain name resolves to a website that competes with Complainant’s online automobile services. Respondent’s disputed domain name registration seeks to profit from Complainant’s CARSTER mark recognition while disrupting Complainant’s business. Given Complainant’s rights in the mark, the Panel supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 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 UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Furthermore, Complainant argues that Respondent uses Complainant’s CARSTER mark to redirect Internet users to Respondent’s <carster.us> domain name and resolving website. Complainant alleges that Internet users seeking to view Complainant’s similar automobile information and services are confused as to the source, affiliation or endorsement of Respondent’s disputed domain name. The Panel finds that such use of the disputed domain name constitutes bad faith use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”)
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carster.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 24, 2010
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