Delta T. Corporation v. Domain Name Proxy, LLC
Claim Number: FA1101001369763
Complainant is Delta T. Corporation (“Complainant”), represented by Andrew D. Dorisio of King & Schickli, PLLC, Kentucky, USA. Respondent is Domain Name Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigassfancompany.com>, registered with Basic Fusion, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.)as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2011; the National Arbitration Forum received payment on January 26, 2011.
On February 1, 2011, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <bigassfancompany.com> domain name is registered with Basic Fusion, Inc. and that Respondent is the current registrant of the name. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, 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 February 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@bigassfancompany.com. Also on February 2, 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 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bigassfancompany.com> domain name is confusingly similar to Complainant’s BIG ASS FAN mark.
2. Respondent does not have any rights or legitimate interests in the <bigassfancompany.com> domain name.
3. Respondent registered and used the <bigassfancompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Delta T. Corporation, owns multiple trademark registrations for its BIG ASS FAN mark (e.g., Reg. No. 3,006,549 issued October 11, 2005). Complainant uses its mark in connection with fans, such as ceiling fans, electric fans, and ventilating fans.
Respondent registered the <bigassfancompany.com> domain name on May 28, 2007. The disputed domain name resolves to a website containing hyperlinks purporting to relate to Complainant’s products but actually resolving to adult-oriented third-party websites.
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.
Previous panels have determined that a complainant established rights in a mark if the complainant provided a trademark registration for the mark with a federal trademark authority. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel determines that Complainant has established rights in its BIG ASS FAN mark under Policy ¶ 4(a)(i), by providing its trademark registrations with the USPTO for said mark (e.g., Reg. No. 3,006,549 issued October 11, 2005).
Past panels have held that a disputed domain name remains confusingly similar to a complainant’s mark if the disputed domain name only removes the spaces from the mark and adds a generic term and a generic top-level domain (“gTLD”). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel concludes that Respondent’s <bigassfancompany.com> domain name is confusingly similar to Complainant’s BIG ASS FAN mark under Policy ¶ 4(a)(i), as the disputed domain name merely removes the spaces separating the terms of the mark and adds the generic term “company” and the gTLD “.com.”
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has satisfied its burden, the burden then shifts to Respondent to provide evidence that it does have some rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has made a sufficient prima facie case. The Panel further finds that Respondent’s failure to submit a Response in these proceedings is evidence that Respondent does in fact lack rights and legitimate interests in the disputed domain name. 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.”). Nevertheless, the Panel will examine the record with regard to the factors outlined in Policy ¶ 4(c) to make a determination regarding Respondent’s rights and legitimate interests in the disputed domain name, if any.
Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the respondent fails to provide any evidence to support such a fact and if the WHOIS information is not similar to the disputed domain name. See 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 Policy ¶ 4(c)(ii) does not apply); 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). In this case, the Panel finds Respondent is not commonly known by the <bigassfancompany.com> domain name pursuant to Policy ¶ 4(a)(i) because Respondent has failed to present any evidence that it is commonly known by the <bigassfancompany.com> domain name and the WHOIS information is not similar to the disputed domain name.
Past panels have found that the utilization of a disputed domain name to provide hyperlinks to adult-oriented websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers). As Respondent uses the <bigassfancompany.com> domain name to resolve to a website with hyperlinks to adult-oriented content, the Panel holds that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Previous panels have found that a respondent engages in bad faith registration and use by using a domain name that is confusingly similar to a complainant’s mark to offer hyperlinks to third-party websites unrelated to Complainant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Based on this precedent and the fact that the Panel has already found the <bigassfancompany.com> domain name to be confusingly similar to Complainant’s mark, the Panel finds Respondent’s use of the <bigassfancompany.com> domain name to resolve to a website hosting hyperlinks to adult-oriented third-party websites that are unrelated to Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Prior panels have held that a respondent’s use of a disputed domain name to resolve to a website with hyperlinks to adult-oriented third-party websites constitutes bad faith registration and use. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to adult-oriented websites). Consequently, the Panel determines that Respondent’s use of the disputed domain name to resolve to a website with hyperlinks to adult-oriented constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigassfancompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 14, 2011
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