Peter Capotosto d/b/a Armor Crafts v.
Steebar Corp.
Claim Number: FA0212000135597
PARTIES
Complainant
is Peter Capostosto d/b/a Armor Crafts, East Northport, NY (“Complainant”). Respondent is Steebar Corp., Andover, NJ (“Respondent”).
The
domain name at issue is <armorcrafts.com>,
registered with Domaindiscover.
PANEL
On
January 7, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 2, 2002; the Forum received a hard copy of the
Complaint on December 2, 2002.
On
December 3, 2002, Domaindiscover confirmed by e-mail to the Forum that the
domain name <armorcrafts.com>
is registered with Domaindiscover and that Respondent is the current registrant
of the name. Domaindiscover has
verified that Respondent is bound by the Domaindiscover 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
December 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 31, 2002 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 postmaster@armorcrafts.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
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 for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<armorcrafts.com>
domain name is identical to
Complainant's ARMOR CRAFTS mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the ARMOR CRAFTS
mark in relation to its mail order catalog that supplies clock making, craft
supplies, and design patterns for the craftsmarket since 1995. Complainant has been doing business since
the 1960’s under variations of the name ARMOR including JC ARMOR and ARMOR
PRODUCTS. Complainant is well known
within its niche market.
Respondent, Steebar Corp., registered the
disputed domain name on June 23, 2000.
Respondent is a competitor of Complainant and is using the disputed
domain name in order to divert Internet users to its own website at
<steebar.com>.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
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 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 has established that it has
rights in the ARMOR CRAFTS mark through continuous use of the mark in relation
to the sale and marketing of its products.
The ICANN dispute resolution policy is “broad in scope” in that “the
reference to a trademark or service mark ‘in which the complainant has rights’
means that ownership of a registered mark is not required–unregistered or
common law trademark or service mark rights will suffice” to support a domain
name Complaint under the Policy. McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000).
Respondent’s <armorcrafts.com>
domain name is identical to Complainant’s mark because it incorporates
Complainant’s entire mark and merely adds the generic top-level domain
“.com.” The addition of a generic
top-level domain (“gTLD”) is irrelevant when determining whether a domain name
is identical or confusingly similar because it is a required feature of every
domain name. Therefore, the gTLD “.com”
adds no distinguishing characteristics capable of overcoming a Policy ¶ 4(a)(i)
analysis. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain “.com” after the name POMELLATO is
not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1146 (9th
Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . .
assume, as a rule of thumb, that the domain name of a particular company will
be the company name [or trademark] followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has failed to respond;
therefore it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain name. When
Complainant asserts a prima facie case against Respondent, the burden of
proof shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Furthermore, because Respondent has not
submitted a Response, it is appropriate for the Panel to accept all reasonable
allegations and inferences in the Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent is using the disputed domain
name in order to divert Internet users to its own website located at
<steebar.com>, which competes with Complainant’s business. Respondent is also in the crafts market,
selling products very similar to Complainant.
The use of a domain name, identical to Complainant’s mark, to divert
Internet users to a competing website is not considered 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 Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services).
Respondent is
commonly known as Steebar Corp.
Furthermore, Respondent is using the disputed domain name in order to
redirect Internet users to <steebar.com>. There is no evidence on record
to establish that Respondent is commonly known as ARMOR CRAFTS or <armorcrafts.com>. Therefore, the Panel finds that Respondent
has no rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent, a competitor of Complainant,
is using the disputed domain name in order to divert Internet users to its own
website at <steebar.com>. The
products sold at this website directly compete with Complainant’s
products. This type of use is evidence
of bad faith use pursuant to Policy ¶ 4(b)(iii) because Respondent is
disrupting Complainant’s business. See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area).
Furthermore, based on the fact that
Respondent is a direct competitor of Complainant and Respondent registered a
domain name that is identical to Complainant’s mark, it can be inferred that
Respondent had actual knowledge of Complainant’s mark when it registered the
disputed domain name. Registration of a
domain name identical to Complainant’s mark, despite actual knowledge of
Complainant’s rights, is evidence of bad faith registration pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <armorcrafts.com>
TRANSFERRED from Respondent
to Complainant.
James P. Buchele, Panelist
Dated: January 16, 2003
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