duPont Publishing, Inc. v. Domain Active
Pty. Ltd. a/k/a Domain Hostmaster
Claim Number: FA0212000137213
PARTIES
Complainant is duPont Publishing, Inc., St. Petersburg, FL, USA (“Complainant”) represented by J. Douglas Baldridge and Stacey H. King, of Howrey Simon Arnold & White. Respondent is Domain Active Pty. Ltd. a/k/a Domain Hostmaster, Clayfield, AUSTRALIA (“Respondent”).
The domain name at issue is <dupont-registry.com>, registered with Fabulous.com Pty Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 19, 2002; the Forum received a hard copy of the Complaint on December 19, 2002.
On January 6, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <dupont-registry.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2003 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@dupont-registry.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.
On January 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dupont-registry.com> domain name is confusingly similar to Complainant’s DUPONT REGISTRY mark.
2. Respondent does not have any rights or legitimate interests in the <dupont-registry.com> domain name.
3. Respondent registered and used the <dupont-registry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant
has published the DUPONT REGISTRY magazine since 1985 as an international forum
for owners or dealers in exotic, collectible and luxury automobiles. Complainant currently has magazines devoted
to luxury yachts and homes as well as automobiles, which are known as the
DUPONT REGISTRY publications.
Complainant’s magazines are distributed in Australia, the United States,
and other locations throughout the world.
Complainant also holds the registration for <dupontregistry.com>.
Complainant
holds a registered mark with the United States Patent and Trademark Office for
DUPONTREGISTRY.COM (Reg. No. 2,616,090).
Complainant’s DUPONT REGISTRY publications marks are all registered in
Australia including DUPONT REGISTRY A BUYERS GALLERY OF FINE AUTOMOBILES (Reg.
No. 782,486), DUPONT REGISTRY A BUYERS GALLERY OF FINE HOMES (Reg. No.
782,487), and A BUYERS GALLERY OF FINE BOATS DUPONT REGISTRY (Reg. No.
782,488). Complainant also has pending
trademark applications for the same in the United States.
Respondent
registered the <dupont-registry.com> domain name on June 25,
2002. Respondent is not licensed to use
Complainant’s marks for any purpose.
Respondent is using the domain name in connection with a website that
offers links to various services on the Internet including gambling, astrology,
entertainment and adult entertainment 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.
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.
Complainant
has established it has rights in the DUPONT REGISTRY mark through its
continuous use in relation to its DUPONT REGISTRY publications since 1985.
Respondent’s
<dupont-registry.com> domain name is confusingly similar to
Complainant’s mark because it incorporates Complainant’s entire mark and merely
adds a hyphen in-between “dupont” and “registry.” The addition of a hyphen does not add any distinct
characteristics capable of overcoming a claim of confusing similarity. See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000)
(finding that the “addition of a hyphen to the registered mark is an
insubstantial change. Both the mark and the domain name would be pronounced in
the identical fashion, by eliminating the hyphen"); see also Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June
19, 2000) (holding that the domain name <cspan.net>, which omitted the
hyphen from the trademark spelling, C-SPAN, is confusingly similar to
Complainant's mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the 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 with respect to 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, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).
Respondent is using
the <dupont-registry.com> domain name to divert Internet users to
a website that features links to online gambling and pornographic
websites. This type of use tarnishes
Complainant’s mark and is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a legitimate, noncommercial or fair use of
the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Moreover, Respondent has submitted no evidence establishing that it is commonly known by DUPONT-REGISTRY or <dupont-registry.com>. Thus, the Panel infers that Respondent is not commonly known by the domain name and therefore has no rights or legitimate interests in <dupont-registry.com> 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <dupont-registry.com> domain name to divert Internet users to a website featuring links to gambling and pornography. The Panel infers that Respondent profits from the Internet traffic it diverts to the various locations listed at the website. Respondent is therefore creating a likelihood of confusion for its own commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).
Complainant’s marks are registered in Australia, Respondent’s domicile; therefore Respondent had actual or constructive knowledge of Complainant’s rights in the DUPONT REGISTRY mark when it registered the <dupont-registry.com> domain name. Registration of a domain name that infringes on Complainant’s mark despite actual or constructive knowledge is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also 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”).
Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dupont-registry.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 5, 2003
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