Foster and Smith, Inc. v. Milan Kovac
Claim Number: FA1105001387360
Complainant is Foster and Smith, Inc. (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drsfosterssmith.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2011; the National Arbitration Forum received payment on May 6, 2011. The Complaint was submitted in both English and Slovak.
On May 6, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <drsfosterssmith.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.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 May 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@drsfosterssmith.com. Also on May 16, 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 June 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <drsfosterssmith.com> domain name is confusingly similar to Complainant’s DRS. FOSTER SMITH mark.
2. Respondent does not have any rights or legitimate interests in the <drsfosterssmith.com> domain name.
3. Respondent registered and used the <drsfosterssmith.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Foster and Smith, Inc., sells animal products under its DRS. FOSTER SMITH mark both via catalog and via the Internet. Complainant’s official website is located at <drsfostersmith.com>. Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for its DRS. FOSTER SMITH mark (Reg. No. 2,683,524 issued February 4, 2003).
Respondent, Milan Kovac, registered the disputed domain name on July 12, 2010. The disputed domain name resolves to a website that features links to the products and services of Complainant’s competitors.
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 has submitted evidence of its USPTO trademark registration for the DRS. FOSTER SMITH mark (Reg. No. 2,683,524 issued February 4, 2003). Prior panels have held that a USPTO registration is sufficient evidence of a complainant’s rights in a mark, even where the respondent resides outside of the United States. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel in this case finds that Complainant has established rights in the DRS. FOSTER SMITH mark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO.
Complainant contends that Respondent’s <drsfosterssmith.com> domain name is confusingly similar to Complainant’s DRS. FOSTER SMITH mark. The disputed domain name removes the period and the spaces from Complainant’s mark, adds an additional letter “s,” and attaches the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of the period from Complainant’s mark and the addition of the “.com” gTLD are not sufficient to properly distinguish the disputed domain name. See Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added). Additionally, the Panel finds that the removal of spaces from between the terms of Complainant’s mark also fails to create a distinct domain name. 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.”). Finally, the Panel finds that the addition of a single letter, in this case “s,” does not remove the disputed domain name from the realm of confusing similarity. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Respondent’s <drsfosterssmith.com> domain name is confusingly similar to Complainant’s DRS. FOSTER SMITH mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant has submitted evidence that establishes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. As Complainant has met its burden under the Policy, the burden has shifted and now Respondent is required to submit evidence that it has rights or legitimate interests in the <drsfosterssmith.com> 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 respond in this proceeding and Respondent’s default fails to create, in this Panel’s mind, any circumstance under which Respondent could possess rights or legitimate interests in the disputed domain name. See 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 which could demonstrate any rights or legitimate interests in the domain name). However, in an effort to make a complete determination as to whether or not Respondent has rights or legitimate interests in the disputed domain name, the Panel elects to consider the record in its entirety.
Complainant argues that the WHOIS information associated with the <drsfosterssmith.com> domain name does not contain any information indicating that Respondent is commonly known by the disputed domain name. In fact, the WHOIS information lists the registrant of the disputed domain name as “Milan Kovac.” The Panel finds there to be no connection between the registrant and the disputed domain name. Additionally, there does not appear to be any other evidence in the record that would allow the Panel to conclude that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant alleges that Respondent’s <drsfosterssmith.com> domain name resolves to a website the features links to the products and services of Complainant’s competitors in the pet products industry. Presumably, Respondent profits each time an Internet user selects one of the displayed links. The Panel finds that Respondent’s use of the disputed domain name to profit from the provision of links to competing websites is not 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant submits that Respondent’s website resolving from the <drsfosterssmith.com> domain name contains links titled, “Cat Supplies,” “Dog Supplies,” and “Ferret Supplies,” as well as links to competing sites such as PetCareRx and ThriftyVet. The Panel finds that Respondent’s registration and use of the disputed domain name to provide links to Complainant’s competitors in the pet products industry demonstrates 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 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).”).
Complainant argues that Respondent is using Complainant’s DRS. FOSTER SMITH mark in the confusingly similar disputed domain name to attract Internet users to its website in an attempt to confuse Internet users by failing to dispel any connection between Complainant and Respondent. Therefore, Respondent has created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel finds this constitutes bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to 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 that 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 <drsfosterssmith.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 28, 2011
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