DBD, INC. v. David Screeton
Claim Number: FA1104001383215
Complainant is DBD, INC. (“Complainant”), represented by Lisa J. Reppert of Reppert Kelly, LLC, New Jersey, USA. Respondent is David Screeton (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidsbridalphotographer.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2011; the National Arbitration Forum received payment on April 13, 2011.
On April 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <davidsbridalphotographer.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 April 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@davidsbridalphotographer.com. Also on April 14, 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 May 5,2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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 <davidsbridalphotographer.com> domain name is confusingly similar to Complainant’s DAVID’S BRIDAL mark.
2. Respondent does not have any rights or legitimate interests in the <davidsbridalphotographer.com> domain name.
3. Respondent registered and used the <davidsbridalphotographer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DBD, INC. v., owns the exclusive rights to the DAVID’S BRIDAL mark which it uses in connection with its retail bridal business including: bridal gowns, formal wear apparel, accessories and photography, among other things. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DAVID’S BRIDAL mark (e.g., Reg. No. 2,426,973 issued February 6, 2001).
Respondent, David Screeton, registered the <davidsbridalphotographer.com> domain name on October 30, 2010. The disputed domain name previously redirected Internet users to Respondent’s own commercial website at <hallofframephotography.com>. After receiving a cease and desist letter from Complainant, Respondent changed the content of the disputed domain name to a parked webpage, offering links to goods and services competing with Complainant’s business.
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.
Complainant asserts that it has established rights in the DAVID’S BRIDAL mark through its registration with the USPTO (e.g., Reg. No. 2,426,973 issued February 6, 2001). The Panel agrees pursuant to Policy ¶ 4(a)(i), finding that trademark registration with a federal trademark authority is sufficient in establishing rights in a mark. See 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)); see also 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).
Complainant contends that Respondent’s <davidsbridalphotographer.com> domain name is confusingly similar to its DAVID’S BRIDAL mark. The disputed domain name contains Complainant’s entire DAVID’S BRIDAL mark, adds the descriptive term “photographer,” removes the spaces in between the words, removes the apostrophe from the word “DAVID’S,” and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the removal of spaces and the addition of a gTLD do nothing to distinguish a disputed domain name from a Complainant’s mark as these elements are required in the creation of a domain name. Earlier panels have also asserted that the addition of a descriptive term and the removal of an apostrophe are insufficient changes to differentiate a disputed domain 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 [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s DAVID’S BRIDAL mark as pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the <davidsbridalphotographer.com> domain name. Once a complainant makes a prima facie case in support of its allegations, the burden of proof shifts to the respondent to show its rights or legitimate interests under Policy ¶ 4(a)(ii). Here, the Panel finds that Complainant has made a prima facie case. Because Respondent has failed to submit a response to the complaint, the Panel is allowed to assume that Respondent does not have rights or legitimate interests in the <davidsbridalphotographer.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”). Nonetheless, the Panel will examine the record to assess whether or not Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use its DAVID’S BRIDAL mark. Further, Complainant provides WHOIS information identifying the domain name registrant as “David Screeton.” Respondent has not set forth any additional evidence to show that it has been commonly known by the domain name. The Panel may take such as an indication that Respondent has not sufficiently established rights or legitimate interests under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent previously used the disputed domain name to automatically redirect Internet users to his own commercial photography website at <hallofframephotography.com>. The Panel finds that this competing use 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 the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to 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 The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Respondent currently uses the <davidsbridalphotographer.com> domain name as a parked page, in which it displays various competing, commercial links. The Panel finds this not to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
After receiving a cease and desist letter from Complainant, Respondent responded with an offer to sell the disputed domain name to Complainant for $100,000. The Panel finds that an offer to sell a disputed domain name for greater than out-of-pocket registration costs is further evidence of Respondent’s lack of rights and legitimate interests in the <davidsbridalphotographer.com> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant sent Respondent a cease and desist letter on February 18, 2011. After receiving this communication, Respondent replied with an offer to sell the disputed domain name for $100,000. The Panel finds Respondent’s willingness to sell the disputed domain name in excess of its original registration costs to be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Complainant contends that Respondent’s former use of the website constituted a blatant competing use when it automatically redirected Internet users to its own commercial website. The Panel finds this to be a disruption of Complainant’s business and evidence of 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
After correspondence from the Complainant, Respondent changed the content of the disputed domain name to a parked webpage offering third-party, click-through links. Based on previous panels’ decisions, the Panel chooses to find this use is a disruption of Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the disputed domain name in an attempt to attract Internet users who are likely trying to reach Complainant’s official website. When they reach Respondent’s website, these Internet users are likely to become confused as to the purported affilliation between Respondent and Complainant. Respondent likely profits off of this creation of confusion, both in its original use of the disputed domain when it redirected Internet users to its own website and now, where it displays commercial links that compete with Complainant’s business. The Panel finds both uses to be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶ 4(a)(iii) is 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 <davidsbridalphotographer.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret,)
Dated: May 5, 2011
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