national arbitration forum

 

DECISION

 

SmugMug, Inc. v. J Bakewell

Claim Number: FA1012001361924

 

PARTIES

Complainant is SmugMug, Inc. (“Complainant”), represented by Matthew D. Schneller of Perkins Coie LLP, Washington.  Respondent is J Bakewell (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smugmug.co>, registered with Network Solutions, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2010; the National Arbitration Forum received payment on December 6, 2010.

 

On December 6, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <smugmug.co> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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.co.  Also on December 10, 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 January 5,2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <smugmug.co> domain name is identical to Complainant’s SMUGMUG mark.

 

2.      Respondent does not have any rights or legitimate interests in the <smugmug.co> domain name.

 

3.      Respondent registered and used the <smugmug.co> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, SmugMug, Inc., is a corporation which provides online photography and video hosting, sharing, and printing services.  Complainant was founded in 2002 and uses its SMUGMUG mark in the promotion of its photo and video services.  Complainant holds a trademark registration for its SMUGMUG mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,278,585 issued August 14, 2007).

 

Respondent, J Bakewell, registered the disputed domain name on July 20, 2010.  The disputed domain name resolves to a directory website which features third-party links, some of which directly compete with Complainant’s online photo business.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established right in its SMUGMUG mark.  Previous panels have found that registration with a federal trademark authority can demonstrate rights in a mark.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).  It is not necessary for Complainant to register its mark within the country of Respondent.  See 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).  Here, Complainant holds a trademark registration for its SMUGMUG mark with the USPTO (e.g. Reg. No. 3,278,585 issued August 14, 2007).  Therefore, the Panel concludes that Complainant has established rights in its SMUGMUG mark through trademark registration pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <smugmug.co> domain name is identical to Complainant’s SMUGMUG mark.  The disputed domain name incorporates Complainant’s mark entirely and merely adds the generic top-level domain (“gTLD”) “.co.”  The Panel finds that the addition of a gTLD is not sufficient to distinguish the disputed domain name from Complainant’s mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel concludes that Respondent’s disputed domain name is identical to Complainant’s SMUGMUG mark according to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights and legitimate interests in the <smugmug.com> domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel determined that the 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.  Here, Complainant has made a prima facie showing in support of its arguments.  Respondent failed to respond to the Complaint, therefore, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, the Panel will look to the record to see if Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.

 

Complainant maintains that Respondent is not commonly known by the <smugmug.co> domain name.  The WHOIS information identifies Respondent as “J Bakewell,” which is not similar to the disputed domain name.  Complainant asserts that Respondent has never been licensed or authorized to use its SMUGMUG mark in any manner.  The Panel also finds no additional information that indicates Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the <smugmug.co> domain name to resolve to a website featuring a list of third-party links to commercial sites, including those of Complainant’s competitors in the online photo industry.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the identical disputed domain name to operate a website which displays links to some of Complainant’s competitors is not 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).  See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the <smugmug.co> domain name disrupts its business.  Internet users wanting to purchase and utilize Complainant’s online photo and video services may find Respondent’s website due to Respondent’s use of the disputed domain name and instead purchase similar services from a competing business.  The Panel finds that Respondent’s use of the disputed domain does disrupt Complainant’s business which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel infers that Respondent receives click-through fees from the previously mentioned links.  Internet users looking for Complainant online may instead find Respondent’s website as a result of Respondent’s use of the identical disputed domain name.  This may create user confusion as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and third-party links.  Respondent tries to capitalize off this confusing by receiving referral fees.  The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 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 Policy ¶ 4(a)(iii) has been met.

 

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.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: January 5, 2011

 

 

 

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