PrintingForLess.com, Inc. v. Carlos Thomas / Dynamic Data Design
Claim Number: FA1103001378070
Complainant is PrintingForLess.com, Inc. (“Complainant”), represented by Dan Rice of PrintingForLess.com, Inc., Montana, USA. Respondent is Carlos Thomas / Dynamic Data Design (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodprintingforless.com>, registered with Onlinenic, 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 March 15, 2011; the National Arbitration Forum received payment on March 15, 2011.
On March 18, 2011, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <goodprintingforless.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@goodprintingforless.com. Also on March 18, 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 April 12, 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 from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <goodprintingforless.com> domain name is confusingly similar to Complainant’s PRINTINGFORLESS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <goodprintingforless.com> domain name.
3. Respondent registered and used the <goodprintingforless.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PrintingForLess.com, Inc., uses its PRINTINGFORLESS.COM and related marks in connection with commercial printing services. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the PRINTINGFORLESS.COM mark (Reg. No. 3,145,572 issued September 19, 2006).
Respondent, Carlos Thomas / Dynamic Data Design, registered the <goodprintingforless.com> domain name on November 15, 2010. The disputed domain name diverts Internet users to a website seemingly unrelated to Complainant that displays the title “MagentoClassic”, a picture of laptop, the heading “New Dell Laptop,” and links to a shopping cart and PayPal.
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 registering its mark with the USPTO firmly establishes Complainant’s rights in the PRINTINGFORLESS.COM mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also 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).”).
Respondent’s <goodprintingforless.com> domain name is confusingly similar to Complainant’s PRINTINGFORLESS.COM mark because the only difference between the two is the generic term “good.” The Panel finds that adding a generic term to Complainant’s mark does not differentiate the disputed domain name according to Policy ¶ 4(a)(i). See 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s <goodprintingforless.com> domain name is confusingly similar to Complainant’s PRINTINGFORLESS.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain names. In this case, the Panel finds that Complainant has adequately presented a prima facie case. Respondent’s failure to respond to Complainant’s allegation allows the Panel to infer that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain names. 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not a licensee or subsidiary of Complainant. Nothing in the record suggests that Respondent is commonly known by the <goodprintingforless.com> domain name, including the WHOIS information that lists the registrant as “Carlos Thomas / Dynamic Data Design.” The Panel thus determines that Respondent is not commonly known by the disputed domain name, and lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s <goodprintingforless.com> domain name diverts Internet users to a website with no apparent relation to Complainant. The resolving website appears to be a commercial website due to the presence of links to a shopping cart and PayPal. The resolving website also displays a heading of “New Dell Laptop” and some foreign language text. The Panel finds that using Complainant’s mark to divert Internet users away from Complainant in favor of another website does not comport with the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <goodprintingforless.com> domain name is partially comprised of Complainant’s PRINTINGFORLESS.COM mark in order to attract Complainant’s potential customers and redirect them to Respondent’s website. Respondent’s use of Complainant’s mark creates a likelihood of confusion among consumers, leading them to believe that Respondent is somehow affiliated with or sponsored by Complainant. The Panel presumes that Respondent engages in these efforts to attract and mislead Internet users in order to profit in some way from the resolving website. The Panel finds that this demonstrates bad faith registration and use according to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodprintingforless.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 19, 2011
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