national arbitration forum

 

DECISION

 

SmartFurniture, Inc. v. Domain Asset Holdings

Claim Number: FA1106001392552

 

PARTIES

Complainant is SmartFurniture, Inc. (“Complainant”), represented by Charles W. Forlidas, Georgia, USA.  Respondent is Domain Asset Holdings (“Respondent”), Maryland, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <designondemand.com>, registered with Tierranet Inc. d/b/a DomainDiscover.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 7, 2011.

 

On June 8, 2011, Tierranet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <designondemand.com> domain name is registered with Tierranet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name.  Tierranet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the Tierranet Inc. d/b/a DomainDiscover 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 June 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@designondemand.com.  Also on June 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 July 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <designondemand.com> domain name is identical to Complainant’s DESIGN ON DEMAND mark.

 

2.    Respondent does not have any rights or legitimate interests in the <designondemand.com> domain name.

 

3.    Respondent registered and used the <designondemand.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, SmartFurniture, Inc., is a privately held company which sells designer and customized furniture through retail store outlets and its online retail website.  Complainant owns the DESIGN ON DEMAND mark, used to promote its 3D custom design software program.  Complainant holds a trademark registration for its DESIGN ON DEMAND mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,463,073 issued July 8, 2008). 

 

Respondent, Domain Asset Holdings, acquired the <designondemand.com> domain name sometime after November 2010 when Complainant allowed its registration of the domain name to lapse.  The disputed domain name currently resolves to a directory website featuring third-party links to Complainant’s official sites and websites of Complainant’s competitors in the design industry. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established rights in the DESIGN ON DEMAND mark.  Panels have previously determined that a complainant can demonstrate rights in a mark by registering with a trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Complainant holds a trademark registration with the USPTO for its DESIGN ON DEMAND mark (Reg. No. 3,463,073 issued July 8, 2008).  Therefore, the Panel finds that Complainant has established rights in the DESIGN ON DEMAND mark through its registration with a trademark authority pursuant to Policy ¶ 4(a)(i).

 

Complainant also contends that Respondent’s <designondemand.com> domain name is identical to Complainant’s DESIGN ON DEMAND mark.  Respondent uses the entire DESIGN ON DEMAND mark within the domain name, changing it only by deleting the spaces between words of the mark and adding the generic top-level domain (“gTLD”) “.com.”   The Panel concludes that deleting spaces and affixing a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark.  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).  The Panel concludes that Respondent’s <designondemand.com> domain name is identical to Complainant’s DESIGN ON DEMAND mark for purposes of Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name.  The panel in Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), stated “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”  Here, Complainant has presented a prima facie case in support of its claims.  Respondent failed to submit a response in this proceeding, which the Panel may interpret as evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  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, the Panel opts to examine the record and determine whether Respondent has any rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the <designondemand.com> domain name.  The WHOIS information presents Respondent as “Domain Asset Holdings,” which is not similar to the disputed domain name.  Moreover, Complainant claims that Respondent has no license or agreement provided by Complainant to use its DESIGN ON DEMAND mark.  Given the evidence, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one 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 the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

The <designondemand.com> domain name resolves to a directory website listing third-party links to Complainant’s actual websites and websites directly competing with Complainant’s design business.  Respondent possibly collects click-through fees from some of the displayed links.  The Panel finds that Respondent’s use of the disputed domain name to operate this directory website rerouting Internet users to various websites 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites; see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

Complainant argues that it previously owned the <designondemand.com> domain name, which shows an initial registration date of February 17, 1998.  Complainant states that it inadvertently let its registration for the disputed domain name expire in November 2010 and that it sent a demand letter to Respondent on May 20, 2011, requesting Respondent to reassign the domain name back to Complainant.  The Panel finds that Complainant’s prior registration of the disputed domain name, combined with Respondent’s registration of the domain name sometime after Complainant established rights in the DESIGN ON DEMAND mark, are evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii).  See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”).

 

Furthermore, Complainant alleges that Respondent is attempting to sell the <designondemand.com> domain name for $35,000 through <domainmarket.com>.  Respondent’s resolving website states “Buy DesignOnDemand.com for $35,000.”  The Panel concludes that Respondent’s general offer to sell the disputed domain name in excess of out-of-pocket costs indicates its lack of rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is attempting to sell the disputed domain name for $35,000 through <domainmarket.com>.  The Panel finds that Respondent’s willingness to dispose of its ownership of the <designondemand.com> domain name is evidence of bad faith use and registration pursuant to 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Although Complainant does not specifically make the argument, Respondent’s registration and use of the disputed domain name may disrupt Complainant’s business.  Internet users intending to use Complainant’s design services may find Respondent’s website instead due to the identical domain name.  Users may then be redirected to a third-party website offering competing design services.  The Panel finds that Respondent’s registration and use of the <designondemand.com> domain name does disrupt Complainant’s business which constitutes bad faith under Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also 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)).

 

The Panel infers that Respondent generates click-through fees from the aforementioned third-party links on the resolving website.  Respondent’s identical domain name creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and featured links.  Respondent’s attempt to profit from this confusion is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See 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); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

Again, Complainant contends that it previously registered the <designondemand.com> domain name and inadvertently let the registration lapse in November 2010, at which point Respondent registered the domain name.  The Panel concludes Respondent’s registration and use of the disputed domain name subsequent to Complainant’s lapse of its ownership of the name is evidence of bad faith under Policy ¶ 4(a)(iii).  See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).

 

            The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <designondemand.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  July 7, 2011

 

 

 

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