Woodbury Optical Studio, Inc. v. theeverythingbagel
Claim Number: FA1202001428064
Complainant is Woodbury Optical Studio, Inc. (“Complainant”), represented by Kathy Lane of Dichter Law, LLC, New York, USA. Respondent is theeverythingbagel (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woodburyoptical.com>, registered with Wild West Domains, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2012; the National Arbitration Forum received payment on February 3, 2012.
On February 3, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <woodburyoptical.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 February 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2012 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@woodburyoptical.com. Also on February 7, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <woodburyoptical.com> domain name is confusingly similar to Complainant’s WOODBURY OPTICAL STUDIO mark.
2. Respondent does not have any rights or legitimate interests in the <woodburyoptical.com> domain name.
3. Respondent registered and used the <woodburyoptical.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Woodbury Optical Studio, Inc., offers optical services and goods from its storefront in Hicksville, New York and has done so since 1988 under the WOODBURY OPTICAL STUDIO mark. Complainant has been a registered corporation in the State of New York since December 28, 1988.
Respondent, theeverythingbagel, registered the disputed domain name on November 12, 2009. The disputed domain name resolves to the website of one of Complainant’s direct local competitors, Optic Masters, Inc., which is located a few miles from Complainant’s storefront.
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 contends that its lack of a trademark registration should not hinder this Panel in finding that it has rights or legitimate interests in the disputed domain name. Previous panels have held that a mark can be unregistered and still satisfy the rights requirement under the UDRP. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Therefore, the Panel finds that Complainant does not need a trademark registration from a national governmental authority to establish its rights in the WOODBURY OPTICAL STUDIO mark under Policy ¶ 4(a)(i) if it is able to show rights under the common law.
Complainant argues that it has created a secondary meaning for the WOODBURY OPTICAL STUDIO mark such that the general public now associates that mark with its business, giving it rights in the mark under the common law. Complainant has been a registered corporation in the State of New York since December 28, 1988 under the WOODBURY OPTICAL STUDIO mark. Complainant has offered optical services and products in Hicksville, New York since that time. Complainant submitted newspaper articles and public correspondence outlining its participation in the local community under the mark. The Panel finds that Complainant has sufficiently established its common law rights in the WOODBURY OPTICAL STUDIO mark for purposes of Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Respondent’s disputed domain name is confusingly similar to Complainant’s WOODBURY OPTICAL STUDIO mark. The disputed domain name includes the first two terms of the mark, omits the term “studio,” and adds the generic top-level domain (“gTLD”) “.com.” The disputed domain name also removes the spaces between terms. These changes do not differentiate the disputed domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <woodburyoptical.com> domain name is confusingly similar to Complainant’s WOODBURY OPTICAL STUDIO 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 Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case against Respondent, indicating a lack of rights or legitimate interests in the disputed domain name and shifting the burden to Respondent to prove otherwise. See 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.”). Respondent, by failing to file a response, allows this Panel to assume it lacks 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.”). However, the Panel will examine the entire record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “theeverythingbagel.” There is no evidence on record that suggests that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by 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 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 asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to the website of a local optical services provider that competes directly with Complainant’s business. The geographic proximity increases the likelihood that Respondent registered the disputed domain name to divert customers to Complainant’s competitor. Therefore, the Panel finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that the disputed domain name was registered and is being used by Respondent for the sole purpose of disrupting Complainant’s business. The disputed domain name resolves to the website of Complainant’s competitor, which operates just a few miles away from Complainant’s storefront. The website offers optical services that compete directly with Complainant’s service and product offerings. Internet users seeking out eye care in the Hicksville, New York area may be searching for Complainant and arrive at the competitor’s website instead. The Panel finds that this use disrupts Complainant’s business, constituting bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that the disputed domain names were registered and used in bad faith where the respondent registered domain names which infringed upon the complainant’s mark, had no resemblance to the respondent’s business name and where the respondent’s competing business was located one and a half blocks from the complainant’s business).
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 <woodburyoptical.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 13, 2012
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