Distinctive Designs, Inc. v. Urcute Entertainment / Doug Melville
Claim Number: FA1101001366076
Complainant is Distinctive Designs, Inc. (“Complainant”), represented by Peter A. Shaddock of Wooten & Shaddock, PLC, Virginia, USA. Respondent is Urcute Entertainment / Doug Melville (“Respondent”), represented by Stephen J. Curley of The Law Offices of Stephen J. Curley, LLC, Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ddisign.com>, registered with GoDaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2011; the National Arbitration Forum received payment on January 7, 2011.
On January 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ddisign.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 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@ddisign.com. Also on January 11, 2011, 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 February 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns the exclusive rights to its DDI SIGNS service mark, which it uses in connection with its custom signage business.
Complainant’s business offers banners, lettering, decals and a variety of other services related to its DDI SIGNS mark.
Complainant holds a service mark registration with the United State Patent and Trademark Office (“USPTO”) for its DDI SIGNS mark (Reg. No. 3,017,650, issued November 22, 2005).
Respondent registered the <ddisign.com> domain name on February 28, 2010.
Previously, the disputed domain name was used to redirect Internet users to Respondent’s website, which is in competition with Complainant’s business.
Upon discovering Respondent’s use of the disputed domain name, Complainant sent Respondent a cease and desist letter, after which Respondent stopped redirecting Internet traffic at the disputed domain and changed the content of the website to read “This website is temporarily unavailable, please try again later."
Currently the disputed domain resolves to an inactive website.
Respondent’s <ddisign.com> domain name is confusingly similar to Complainant’s DDI SIGNS mark.
Respondent does not have any rights to or legitimate interests in the domain name <ddisign.com>.
Respondent registered and uses the <ddisign.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DDI SIGNS mark under Policy ¶ 4(a)(i)) by virtue of its registration of the mark with a national trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Respondent’s <ddisign.com> domain name is confusingly similar to Complainant’s DDI SIGNS service mark. The disputed domain name contains Complainant’s entire mark, merely omitting an ‘s,’ removing the space between the terms and adding the generic top-level domain (“gTLD”) “.com.” Such alterations are insufficient to distinguish a disputed domain name from a complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
See also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made a disputed domain name confusingly similar to it).
Accordingly, the Panel finds that Respondent’s <ddisign.com> domain name is confusingly similar to Complainant’s DDI SIGNS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights to and legitimate interests in the <ddisign.com> domain name. Previous panels have found that where a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to show that it does have rights to or legitimate interests in its contested domain name. 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 a complainant, the burden then shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name.
Complainant has made out a sufficient prima facie case on the point of Respondent’s rights to and legitimate interests in the contested domain. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may therefore accept as true the assertion that Respondent does not have rights to or legitimate interests in the <ddisign.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.” Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in its contested domain name which are cognizable under the Policy.
We first observe that Complainant contends, and Respondent does not deny, that Respondent is not authorized to use the DDI SIGNS mark, and that Respondent is not commonly known by the <ddisign.com> domain name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Urcute Entertainment / Doug Melville,” which does not resemble the disputed domain name. On this record we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have established rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next note that Complainant alleges, without objection from Respondent, that Respondent previously used the <ddisign.com> domain name to redirect Internet users to Respondent’s own website, which offered services and goods in competition with Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent profited from this behavior by receiving income from this redirection activity, whether in the form of click-through fees or otherwise. This use of the contested domain 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). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s own website for commercial gain does not constitute either 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 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 Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Still under this head of the Complaint, Complainant contends that the disputed domain currently resolves to an inactive website, and that, after Complainant sent Respondent a cease and desist letter, Respondent stopped redirecting Internet traffic at the disputed domain and changed the content of the website to read “This website is temporarily unavailable, please try again later." Respondent does not contest these assertions. Respondent’s failure to make an active use of the <ddisign.com> domain name is likewise 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Finally on the point of Respondent’s rights to and legitimate interests in the contested domain, Respondent appears to take advantage of a common misspelling of Complainant’s DDI SIGNS mark by its use of the <ddisign.com> domain name. This constitutes “typo-squatting” and is evidence that Respondent lacks rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has used the <ddisign.com> domain name in competition with the business of Complainant to misdirect Internet users, who were presumably seeking Complainant’s official website, to Respondent’s own website which offered competing goods. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that that respondent registered and used the domain name to disrupt that complainant’s business within the contemplation of Policy ¶ 4(b)(iii)).
It must also be said that Internet users, searching for Complainant’s official products, were likely to become confused as to the possibility of a relationship between Complainant and Respondent’s website. Respondent was likely profiting from this confusion. Respondent’s use of the contested domain as alleged constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website, which offered competing travel services, came within the ambit of Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where a respondent used the <dellcomputerssuck.com> domain name to divert Internet users to that respondent’s website, featured competing computer products and services).
Respondent is not currently making an active use of the <ddisign.com> domain name. The failure to make an active use of a disputed domain name nonetheless constitutes bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a disputed domain name or the resolving website, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Moreover, Respondent is engaged in typo-squatting by diverting Internet users who likely reach Respondent’s website when they mistakenly enter into a web browser a misspelled version of Complainant’s mark. This is evidence of bad faith registration and use of the contested domain under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005):
Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] … mark.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ddisign.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 11, 2011
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