Bar Code Direct, Inc. v. Charles Eglinton
Claim Number: FA1104001383535
Complainant is Bar Code Direct, Inc. (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Charles Eglinton (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barcodedirectmail.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2011; the National Arbitration Forum received payment on April 13, 2011.
On April 14, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <barcodedirectmail.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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@barcodedirectmail.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 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the BAR CODE DIRECT service mark, and has been using the mark for more than 17 years in connection with its business of providing automatic identification systems to commercial, institutional, governmental and industrial users.
Complainant holds a service mark registration for the BAR CODE DIRECT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,514,913, issued December 4, 2001).
Respondent registered the <barcodedirectmail.com> domain name on October 28, 2010.
The disputed domain name resolves to a directory website which displays a list of links related to Complainant’s business, some of which resolve to websites of enterprises that compete with the business of Complainant.
Respondent’s <barcodedirectmail.com> domain name is confusingly similar to Complainant’s BAR CODE DIRECT mark.
Respondent is not commonly known by the contested <barcodedirectmail.com> domain name.
Respondent does not own any rights in the BAR CODE DIRECT service mark and is not authorized to use the mark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <barcodedirectmail.com>.
Respondent registered and uses the <barcodedirectmail.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the BAR CODE DIRECT service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <barcodedirectmail.com> domain name is confusingly similar to Complainant’s BAR CODE DIRECT service mark. The disputed domain name uses the entire mark, and merely deletes the spaces between the terms of the mark, while adding the generic term “mail” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark are insufficient to avoid a finding of confusing similarity as between the domain name and the mark under the standards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a complainant’s mark and the addition of a gTLD in forming a contested domain name do not establish distinctiveness from the mark under 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 contained the identical mark of a complainant combined with a generic word or term).
The Panel therefore concludes that Respondent’s <barcodedirectmail.com> domain name is confusingly similar to Complainant’s BAR CODE DIRECT service mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the <barcodedirectmail.com> domain name. Complainant is obliged to make out a prima facie case in support of this allegation, whereupon the burden shifts to Respondent to demonstrate that it does have such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a prima facie showing in support of its claims under this head of the Policy. Owing to Respondent’s failure to respond to the Complaint, we may therefore presume that Respondent has no rights to or legitimate interests in the contested domain name which would satisfy the requirements of Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent failed to respond to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first observe that Complainant argues, and Respondent does not deny, that Respondent is not commonly known by the <barcodedirectmail.com> domain name, and that Respondent does not own any rights in the BAR CODE DIRECT mark and is not authorized to use the mark in the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Charles Eglinton,” which is not similar to the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name, and so has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain).
We next note Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a directory website featuring links resolving to commercial websites operating in competition with Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to these links. Respondent’s use of the contested domain name in this manner is not 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal with hyperlinks to third-party websites, some of which may be in direct competition with the business of a complainant, 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 also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <barcodedirectmail.com> domain name in the fashion alleged in the Complaint disrupts Complainant’s business. The registration and use of the domain name is thus indicative of bad faith 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the disputed domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Because the <barcodedirectmail.com> domain name is confusingly similar to Complainant’s BAR CODE DIRECT service mark, there is a substantial likelihood of confusion among Internet users as to the possibility of Complainant’s sponsorship of, or affiliation with, the resolving website and the products offered by the third-party links featured there. Respondent likely receives click-through fees from the visits of Internet users to the third-party links featured on the website resolving from the domain name. Respondent’s registration and use of the disputed domain name for the purposes of running a commercial search engine thus constitutes evidence of bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites that featured services similar to those offered by that complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <barcodedirectmail.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 18, 2011
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