Filmtools, Inc. v. Koymen Kadir
Claim Number: FA1102001372752
Complainant is Filmtools, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is Koymen Kadir (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <handyfilmtools.com>, registered with REG2C.COM, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2011; the National Arbitration Forum received payment on February 11, 2011. The Complaint was submitted in both Turkish and English.
On February 16, 2011, REG2C.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <handyfilmtools.com> domain name is registered with REG2C.COM, INC. and that Respondent is the current registrant of the name. REG2C.COM, INC. has verified that Respondent is bound by the REG2C.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 March 2, 2011, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of March 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@handyfilmtools.com. Also on March 2, 2011, the Turkish language 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 March 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <handyfilmtools.com> domain name is confusingly similar to Complainant’s FILMTOOLS mark.
2. Respondent does not have any rights or legitimate interests in the <handyfilmtools.com> domain name.
3. Respondent registered and used the <handyfilmtools.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Film Tools, Inc., is a retail store and online supplier of film equipment. Complainant owns multiple registrations for the FILMTOOLS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,923,148 issued February 1, 2005). Complainant uses the mark the support its business functions.
Respondent, Koymen Kadir, registered the disputed domain name on December 27, 2009. The disputed domain name resolves to a site offering goods and services in direct competition with Complainant.
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.
The Panel finds that Complainant has established its rights in its FILMTOOLS mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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).
Respondent’s <handyfilmtools.com> domain name is confusingly similar to Complainant’s FILMTOOLS mark. The disputed domain name includes the entire mark, and merely adds the generic term “handy” and the generic top-level domain “.com.” The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The Panel finds that Complainant has met its burden of proof by making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The burden now shifts to Respondent to prove its 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.”). Respondent has failed to file a response in this action which allows this Panel to assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will nonetheless examine the record in accordance with the provisions of Policy ¶ 4(c) to determine whether Respondent does in fact have rights or legitimate interests in the <handyfilmtools.com> domain name.
Complainant asserts that Respondent is not commonly known by the <handyfilmtools.com> domain name. Respondent has offered no evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the domain name as “Koymen Kadir.” Nothing in the record or the WHOIS information indicates that Respondent is commonly known by the disputed domain name causing this Panel to find that Respondent is not commonly known by the disputed domain name pursuant to 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).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <handyfilmtools.com> domain name. Respondent’s disputed domain name resolves to a site offering products and services that directly compete with Complainant’s products in the film equipment sector. This use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <handyfilmtools.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is disrupting its business through its registration and use of the <handyfilmtools.com> domain name. Respondent’s disputed domain name resolves to a site where it offers products and services that compete with Complainant. Internet users may arrive at Respondent’s site using the confusingly similar domain name and then purchase goods from Respondent, rather than Complainant. The Panel finds that this disruption constitutes bad faith registration and use 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent gains commercially from the operation of the <handyfilmtools.com> domain name, which constitutes bad faith registration and use. The disputed domain name resolves to a site selling competing goods and services which are similar to what Complainant offers through its own business. Respondent likely profits from the sale of these goods to Internet users diverted to its site through the confusingly similar domain name. Therefore, the Panel finds that Respondent commercially gains from the operation of the disputed domain name and is therefore guilty of registering and using the domain name in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Complainant has established 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 <handyfilmtools.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 5, 2011
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