Dioptics Medical Products, Inc. v. Chris Riley
Claim Number: FA1107001398584
Complainant is Dioptics Medical Products, Inc. (“Complainant”), represented by Kay Lyn Schwartz of Gardere Wynne Sewell LLP, Texas, USA. Respondent is Chris Riley (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uvsolarshieldsunglasses.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2011; the National Arbitration Forum received payment on July 13, 2011.
On July 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <uvsolarshieldsunglasses.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 July 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@uvsolarshieldsunglasses.com. Also on July 15, 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 August 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <uvsolarshieldsunglasses.com> domain name is confusingly similar to Complainant’s SOLAR SHIELD mark.
2. Respondent does not have any rights or legitimate interests in the <uvsolarshieldsunglasses.com> domain name.
3. Respondent registered and used the <uvsolarshieldsunglasses.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dioptics Medical Products, Inc., is the owner of the SOLAR SHIELD mark. The mark has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,758,044 registered March 16, 1993). The SOLAR SHIELD mark is used in connection with the sale of sunglasses.
Respondent, Chris Riley, registered the <uvsolarshieldsunglasses.com> domain name on April 19, 2011. The disputed domain name resolves to a website which displays links to Complainant’s competitors’ websites and requests Internet users’ contact information.
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 registered its SOLAR SHIELD mark with the USPTO (Reg. No. 1,758,044 registered March 16, 1993). The Panel finds that Complainant’s registration of its SOLAR SHIELD mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <uvsolarshieldsunglasses.com> domain name is confusingly similar to its SOLAR SHIELD mark. The disputed domain name incorporates Complainant’s mark in its entirety, removes the space between words of the mark, adds the descriptive terms “uv” and “sunglasses,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these additions and minor alterations to Complainant’s mark do not remove the confusingly similar nature of Respondent’s <uvsolarshieldsunglasses.com> domain name to the mark under Policy ¶ 4(a)(i). 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); 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.”).
The Panel finds Complainant upheld its burden of proof under Policy ¶ 4(a)(i), and finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
Complainant must establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has done so, the burden shifts to Respondent to disprove the allegation. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s lack of affirmative response to these proceedings, the Panel may proceed to view the evidence in light most favorable to Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel may, however, use its discretion to review the evidence prior to concluding the Respondent’s rights and legitimate interests based on the Policy ¶ 4(c) guidelines.
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <uvsolarshieldsunglasses.com> domain name lists “Chris Riley” as the registrant. Complainant also indicates that it has not given Respondent license or other authorization to use its SOLAR SHIELD mark. The Panel finds these facts, viewed as a whole with the absence of information to the contrary, establish the conclusion that Respondent is not commonly known by the disputed domain name 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent is not using the disputed domain name for 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). Complainant alleges that Respondent’s <uvsolarshieldsunglasses.com> domain name resolves to a website with hyperlinks that direct Internet users to Complainant’s sunglass manufacturing competitors. The Panel finds that such use 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 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also alleges that Respondent’s <uvsolarshieldsunglasses.com> domain name resolves to a website that defrauds Internet users by alleging to provide goods to gain personal information for presumed fraudulent behavior. The Panel finds that “phishing” for personal information 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds Complainant upheld its burden of proof under Policy ¶ 4(c)(ii), and finds Respondent’s use of the disputed domain name 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).
Complainant alleges that Respondent uses the <uvsolarshieldsunglasses.com> domain name to present a website with third-party hyperlinks that direct Internet users to Complainant’s competitors, to include “Ray-Ban,” “Oakley,” and “Sunglass Hut”. The Panel finds that diversion of Complainant’s business by listing Complainant’s competitors on a website resolving from a domain name that is confusingly similar to Complainant’s SOLAR SHIELD mark constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); 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)).
Complainant asserts that Internet users, seeking Complainant’s business, will become confused as to its sponsorship or affiliation of Respondent’s website resolving from the <uvsolarshieldsunglasses.com> domain name. Complainant argues that this confusion will stem from the confusingly similar disputed domain name which incorporates Complainant’s SOLAR SHIELD mark in its entirety as well as the display of Complainant’s mark on the website resolving from the disputed domain name. Complainant alleges that Respondent capitalizes on this confusion by collecting click-through fees, thus using the disputed domain name for commercial gain, which Complainant claims is evidence of bad faith registration and use. The Panel finds Respondent’s use of the disputed domain name is for Respondent’s own commercial gain and as such constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Further, Complainant asserts that Respondent is using the confusingly similar <uvsolarshieldsunglasses.com> domain name to intentionally attract Internet users to “phish” for users’ personal information by creating a strong likelihood of confusion with Complainant’s SOLAR SHIELD mark. Complainant indicates that Internet users are required to input personal contact information under the “Contact Us” subpage of the website resolving from the disputed domain name. The Panel presumes that Respondent profits by using such information for fraudulent purposes. Thus, the Panel finds that Respondent’s use of the <uvsolarshieldsunglasses.com> domain name for a phishing scheme is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel finds Complainant upheld its burden of proof under Policy ¶ 4(a)(iii), and finds Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uvsolarshieldsunglasses.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 23, 2011
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