national arbitration forum

 

DECISION

 

SmugMug, Inc. v. RegisterServ.com / RegisterServ

Claim Number: FA1010001354435

 

PARTIES

Complainant is SmugMug, Inc. (“Complainant”), represented by Matthew D. Schneller of Perkins Coie LLP, Washington, USA.  Respondent is RegisterServ.com / RegisterServ (“Respondent”), Morocco.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smugmug.us>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of his or her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 25, 2010; the National Arbitration Forum received payment October 25, 2010.

 

On October 27, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <smugmug.us> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@smugmug.us in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).  Also on November 4, 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.

 

A timely Response was received and determined to be complete on November 29, 2010.

 

On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

Neither party filed Additional Submissions but someone emailed a document dated November 29, 2010, purporting to show that the parties had signed an agreement to transfer the domain name but the Panel received nothing to show that it was filed pursuant to a Rule or that it was properly before the Panel.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.     Complainant makes the following points in this proceeding:

1.      Respondent registered a domain name that contains Complainant’s protected mark in its entirety.

2.      Respondent has no rights to or legitimate interests in the domain name containing Complainant’s protected mark.

3.      Complainant registered and used the domain name in bad faith.

 

B.     Respondent makes the following points in the Response:

1.      Respondent does not address the identical nature or the confusing similarity of the domain name.

2.      Respondent claims that the disputed domain name was registered as a part of the “affiliation program of SMUGMUG.COM” and was a page promoting SMUGMUG.COM.

3.      Respondent claims that the use made of Complainant’s mark was a “fair use.”

4.      Respondent notes that it made an offer to transfer the domain name if Complainant was dissatisfied with the use Respondent was making of the domain name.

5.      Respondent did not address the issue of bad faith registration and use.

 

C.     Neither party filed Additional Submissions.

 

D.     In the document purporting to have been jointly signed by the parties November 29, 2010, references an agreement to transfer the domain name; however, no information shows that this document was filed pursuant to a Rules or that it is appropriately before the Panel.

 

FINDINGS

 

Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its SMUGMUG mark (e.g., Reg. No. 3,278,585 issued August 14, 2007).  Complainant established rights in its mark under Policy ¶ 4(a)(i).

 

Respondent registered the disputed domain name November 20, 2009, some two years after Complainant’s registration and some seven years after Complainant urges its first use in commerce of the mark.

 

No evidence presented by Complainant or Respondent suggests that Respondent owns a trademark or service mark for the disputed domain name.

 

Respondent maintains that the domain name was registered and used only for the purpose of cooperating with and promoting Complainant through its affiliate program; however, Respondent did not disprove Complainant’s claim that Respondent has earned monetary benefit from the opportunistic exploitation of Complainant’s protected mark from those seeking Complainant and others that compete with Complainant.

 

DISCUSSION

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."

 

Paragraph 4(a) of the Policy requires Complainant to 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 Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical to and/or Confusingly Similar

 

Complainant submitted evidence to show that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its SMUGMUG mark (e.g., Reg. No. 3,278,585 issued August 14, 2007).  The Panel finds that Complainant established rights in its mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO.  Further, the Panel finds that Complainant need not own a trademark registration within the country of Respondent’s residence to establish such rights under the Policy.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant asserts that the disputed <smugmug.us> domain name is identical to its SMUGMUG mark under Policy ¶ 4(a)(i).  Complainant argues that simply adding the country-code top-level domain (“ccTLD”) “.us” to its mark is not sufficient to distinguish the disputed domain name from its mark.  The Panel agrees and finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See 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); see also 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”).

 

Respondent made no presentation relative to the elements of ICANN Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain name is identical to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant has done so, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that neither side presented evidence that suggests that Respondent owns a trademark or service mark for the disputed domain name.  Therefore, the Panel finds that under usTLD Policy ¶ 4(c)(i), Respondent lacks rights and legitimate interests in the disputed domain name.  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the 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 that the WHOIS information for the disputed domain name identifies “RegisterServ.com/ RegisterServ” as the registrant, and that, as such, Respondent is not commonly known by the disputed domain name.  Further, Complainant asserts that Complainant never licensed Respondent or otherwise authorized Respondent to use its SMUGMUG mark in any way.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(iii) based upon Complainant’s assertions and the WHOIS information on record.  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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant contends that Respondent is using the disputed domain name to resolve to a website that appears to be that of Complainant.  Complainant submits screen-shot evidence to show that Respondent uses Complainant’s SMUGMUG mark as well as photos and other copyright protected advertising materials from Complainant’s official <smugmug.com> website on Respondent’s resolving website.  Further, Complainant notes that Respondent’s website contains various third-party hyperlinks to Complainant’s official website as well as to other websites.  Complainant contends that such use cannot constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and it cannot constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  The Panel agrees and finds that Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Respondent contends that it uses the disputed domain name to link to Complainant’s official website through Complainant’s affiliate program.  Respondent has not shown under Policy ¶ 4(c)(ii) that Respondent was a legitimate member of Complainant’s affiliate program and Complainant has denied any such permission or license.

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant urges that Respondent registered and used the disputed domain name in bad faith.  Complainant contends that Respondent’s website is nearly identical to Complainant’s official website and that it features not only links to Complainant’s official website, but also links to other websites.  Complainant contends that such use of an identical domain name disrupts Complainant’s business because Respondent is diverting Internet users from Complainant to other websites.  The Panel finds that Respondent’s use of the disputed domain name to display a nearly identical website as Complainant that diverts Internet users seeking Complainant’s goods to other websites, some of which compete with Complainant, is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of UDRP ¶ 4(b)(iii)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to UDRP ¶ 4(b)(iii)).

 

Further, Complainant alleges that Respondent receives commercial benefit in the form of click-through and affiliate fees from the businesses advertised on and linked to on Respondent’s website.  Complainant argues that such use of an identical domain name is further evidence of Respondent’s bad faith registration and use.  The Panel agrees and finds that Respondent’s use of the disputed domain name to display a nearly identical website to Complainant’s official <smugmug.com> website that contains various third-party links to Complainant’s website as well as to other third-party websites, presumably for financial gain, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

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 <smugmug.us> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: December 13, 2010.

 

 

 

 

 

 

 

 

 

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