Infusion Brands International, Inc. f/k/a OmniReliant Holdings v. MONIKER John
Claim Number: FA1105001387477
Complainant is Infusion Brands International, Inc. f/k/a OmniReliant Holdings (“Complainant”), represented by Christopher M. Bohne of Infusion Brands International, Inc. f/k/a OmniReliant Holdings, Florida, USA. Respondent is MONIKER John (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestdualsaw.com>, registered with GoDaddy.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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2011; the National Arbitration Forum received payment on May 6, 2011.
On May 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestdualsaw.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 May 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@bestdualsaw.com. Also on May 9, 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 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
[a.] The domain name Bestdualsaw.com is confusingly similar to the Complainant’s Registered Trade Mark “DUAL SAW”. Moreover, Complainant is the owner of the Dualsaw.com domain name and currently airs a direct response infomercial by the name “DUAL SAW” found at www.dualsaw.com for which Respondent is attempting to benefit by the goodwill and advertising created by Complainant.
[b.] The Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name, Bestdualsaw.com, since the product Respondent sells and promotes on the site is actually called the “Cayman Counter Rotating Saw”. Respondent is attempting to use the goodwill created by Complainant in the airings of Complainant’s direct response infomercial through out United States. Respondent is acting in bad faith in selling product by and through the domain name Bestdualsaw.com while Complainant is the Registered owner of the trade mark “DUAL SAW” and offers a nearly identical rotating saw for sale.
[c.] The domain name bestdualsaw.com is registered in bad faith by Respondent because they do not hold themselves out as a company by that name, nor do they sell a product by that name, and Complainant is the registered trade mark owner of “DUAL SAW”. By using the domain name Bestdualsaw.com, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark, “DUAL SAW”, as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product on Respondent’s web site or location.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Infusion Brands International, Inc., is a consumer products retailer offering circular saws. Complainant was formerly known as OmniReliant Holdings but has changed its corporation name to Infusion Brands International, Inc. Complainant owns a trademark registration for the DUAL SAW mark with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 3,936,242 filed April 24, 2009 issued March 29, 2011). Complainant uses the DUAL SAW mark to market and sell its circular saws.
Respondent MONIKER John registered the disputed domain name on January 25, 2011. The disputed domain name resolves to a site offering a circular saw product that directly competes with Complainant’s own product offerings.
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 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 contends it has rights in the DUAL SAW mark extending back to April 24, 2009, prior to the registration of the domain name, because of its trademark registration with the USPTO. The Panel finds Complainant has established its rights in the DUAL SAW mark under Policy ¶4(a)(i) dating back to April 24, 2009 by filing and registering the mark with the USPTO (Reg. No. 3,936,242 filed April 24, 2009 issued March 29, 2011). See 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); 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).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant contends Respondent’s disputed domain name is confusingly similar to its DUAL SAW mark. Frankly, the Panel finds this somewhat troubling in light of the somewhat descriptive nature of the mark and the parties’ products. However, Respondent has chosen not to respond to the Complaint which means Respondent essentially admits the essential allegations of the complaint. Respondent’s <bestdualsaw.com> domain name incorporates the entire mark and adds the descriptive term “best” and the generic top-level domain (“gTLD”) “.com” while removing the space. The Panel finds these changes are insufficient to differentiate the disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); 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.”); see also 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)).
The Panel finds Policy ¶4(a)(i) established.
Respondent now has the burden of proving its rights in the disputed domain name because the Panel finds Complainant has met its initial burden of proof by making a prima facie case showing Respondent’s lack of rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). Respondent has failed to file a response in this matter which allows this Panel to assume Respondent lacks any 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.”). Nonetheless, the Panel will examine the entire record to determine whether Respondent does in fact retains rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶4(c).
Complainant claims that Respondent is not commonly known by the <bestdualsaw.com> domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant as “MONIKER John.” The Panel finds that, based on the evidence in the record, Respondent is not commonly known by the disputed domain name pursuant to 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 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).
Complainant also claims Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the <bestdualsaw.com> domain name. Respondent’s disputed domain name resolves to a site that sells saws and saw related products in direct competition with Complainant’s own business. Once again, Respondent has chosen not to respond to this allegation. The Panel finds Respondent is using the site to sell goods competing with Complainant and that usage does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the <bestdualsaw.com> domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. 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.”).
The Panel finds Policy ¶4(a)(ii) established.
Complainant alleges Respondent’s disputed domain name disrupts its business and as a result is registered and used in bad faith. Respondent’s <bestdualsaw.com> domain name resolves to a site offering products for sale which directly compete with Complainant’s own goods. Internet users searching for Complainant may arrive at Respondent’s site and purchase those goods instead of Complainant’s goods. Respondent does not dispute this. The Panel finds Respondent is disrupting Complainant’s business under Policy ¶4(b)(iii) by using the disputed domain name to market and sell competing goods, which is evidence of bad faith registration and use. 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).
Complainant also alleges Respondent is gaining commercially from the utilization of the confusingly similar domain name which constitutes bad faith registration and use. Respondent’s disputed domain name resolves to a site which sells products that compete directly with Complainant’s goods in the saw marketplace. Respondent presumably collects revenue from the sale of these goods. Once again, Respondent does not dispute this. The Panel finds Respondent is attempting to commercially gain from the confusingly similar domain name by selling competing goods which constitutes bad faith registration and use under Policy ¶4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶4(b)(iv).”).
The Panel finds Policy ¶4(a)(iii) established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestdualsaw.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 14, 2011
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