national arbitration forum

 

DECISION

 

C-Scape Consulting Corporation v. Icandy

Claim Number: FA1208001459580

 

PARTIES

Complainant is C-Scape Consulting Corporation (“Complainant”), represented by Richard G. Tashjian of Tashjian & Padian, New York, USA.  Respondent is Icandy (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <icandyds.com>, registered with GoDaddy.com, LLC.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2012; the National Arbitration Forum received payment on August 24, 2012.

 

On August 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <icandyds.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@icandyds.com.  Also on August 29, 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.

 

Respondent submitted a Response after the deadline to file a response. Thus the Response was not in compliance with ICANN Rule 5.  The Panel, in its discretion, has considered this Response.  See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

 

On September 21, 2012, 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.

 

 

On September 24, 2012, Complainant submitted a timely Additional Submission which the Panel has considered.

 

On October 9, 2012, Respondent submitted another untimely submission which the Panel has considered.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ICANDY mark (Reg. No. 3,094,598 registered May 23, 2006). 

 

Complainant uses its ICANDY mark in connection with Complainant’s goods and services in the field of digital signage.

 

Respondent’s <icandyds.com> domain name is confusingly similar to Complainant’s ICANDY mark because the only differences between the two are the additions of the letters “ds” and the generic top-level domain (“gTLD”) “.com.”

Respondent does not own any trademark registrations or any intellectual property rights for the <icandyds.com> domain name.

 

Respondent uses the <icandyds.com> domain name to offer digital signage in competition with Complainant. 

 

Respondent is attempting to divert Internet users to Respondent’s competing website in order to commercially gain by creating a likelihood of confusion as to Complainant’s affiliation with the <icandyds.com> domain name.

 

Respondent had actual and constructive knowledge of Complainant’s rights in the ICANDY mark.

 

B. Respondent

 

Respondent and Complainant are not competitors because Respondent is in the “Restaurant MenuBoard” business and Complainant is in the “ticker tape displays” business.

 

The phrase “iCandy” is made up of common terms used by other companies.

 

No confusion is created because Complainant and Respondent are not competitors and operate different businesses.

 

Respondent did not have any knowledge of Complainant or of Complainant’s business when it registered the disputed domain name.

 

Many companies use the “iCandy” mark even in the same industry as Complainant.

 

C.   Complainant’s Additional Submission

 

Complainant contends that both businesses operate in the field of digital signage, which is synonymous with “large scale electronic displays.”  As a result Respondent is unlawfully using Complainant’s trademark in the same field of use causing confusion.

 

Because Respondent is unlawfully using Complainant’s trademark in the same field of use, Respondent has no rights or legitimate interests in respect of the domain name and has registered and is using the domain name in bad faith.

 

Although Respondent contends that the two companies have a completely different business model, one outside and inside LED displays and the other for indoor restaurant menu boards, Complainant contends that both companies sell electronic signage to customers in the restaurant and food service industries for the purpose of displaying information about their offerings.

 

Complainant’s trademark is not limited to just ticker tape displays but encompasses any electronic delivery of text.

 

D.   Respondent’s Additional Submission

 

Respondent contends that the use of "icandyds" is completely different in that the word does not sound like Complainant's mark because it has two extra syllables at the end.  The pronunciation is different.  The categories listed with Complainant’s trademark do not include restaurant menus. 

 

FINDINGS

 

Complainant, C-Scape Consulting Corporation, owns a trademark registration with the USPTO for the ICANDY mark (Reg. No. 3,094,598 registered May 23, 2006).  Complainant uses its ICANDY mark in connection with Complainant’s goods and services in the field of digital signage.

 

Respondent, iCandy Digital LLC, uses the <icandyds.com> domain name to offer digital signage in competition with Complainant.  Respondent and Complainant are competitors.  Respondent registered the <icandyds.com> domain name on January 10, 2012.

 

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."

 

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 uses the ICANDY mark in connection with Complainant’s goods and services in the field of digital signage.  Complainant owns a trademark registration with the USPTO for the ICANDY mark (Reg. No. 3,094,598 registered May 23, 2006).  In AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panel found that, where the complainant had submitted evidence of its trademark registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).” Therefore, the Panel finds that Complainant’s USPTO trademark registration sufficiently demonstrates Complainant’s rights in the ICANDY mark under Policy ¶ 4(a)(i).

 

Complainant avers that Respondent’s <icandyds.com> domain name is confusingly similar to Complainant’s ICANDY mark.  Complainant argues that Respondent only added the letters “ds,” which Complainant contends are an abbreviation for “digital signage,” and the gTLD “.com.”  In Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000), the panel concluded that <kelsonmd.com> was identical or confusingly similar to the complainant’s federally registered service mark, KELSON, because the only changes made were the additions of the letters “md” and the gTLD “.com.”  Therefore, the Panel finds that Respondent’s <icandyds.com> domain name is confusingly similar to Complainant’s ICANDY mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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.  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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Under Policy ¶ 4(a)(ii), Complainant does not specifically argue that Respondent is not commonly known by the <icandyds.com> domain name.  However, Complainant does claim that Respondent does not own any trademark registrations or any intellectual property rights for the <icandyds.com> domain name.  The WHOIS information lists “Icandy” as the registrant of the disputed domain name.  However, Respondent does not argue that it is commonly known by the disputed domain name and does not present any further evidence in support of the WHOIS information.  In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel determined that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name, despite listing its name as “Shanti Yoga Works” in its WHOIS contact information, because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.”  Thus, the Panel finds that Respondent is not commonly known by the <icandyds.com> domain name for the purpose of Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent uses the <icandyds.com> domain name to offer digital signage in competition with Complainant.  In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services

 

Respondent alleges that Respondent and Complainant are not competitors because Respondent is in the “Restaurant MenuBoard” business and Complainant is in the “ticker tape displays” business.  Respondent claims that it uses the <icandyds.com> domain name to operate its legitimate business.  Respondent additionally claims that the phrase “iCandy” is made up of common terms used by other companies.

 

The Panel finds that Respondent uses the <icandyds.com> domain name to offer digital signage in competition with Complainant.  Therefore, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <icandyds.com> domain name.

 

Registration and Use in Bad Faith

 

Respondent is attempting to divert Internet users to Respondent’s competing website in order to commercially gain by creating a likelihood of confusion as to Complainant’s affiliation with the <icandyds.com> domain name.  Respondent competes with Complainant by offering digital signage at the resolving website.  Internet users may become confused as to Complainant’s affiliation with the disputed domain name and resolving website due to Respondent’s use of Complainant’s ICANDY mark in the domain name and the offering of competing products and services.  See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)( the panel found bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).  Accordingly, the Panel finds that Respondent that Respondent registered and uses the <icandyds.com> domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant additionally alleges that Respondent had actual and constructive knowledge of Complainant’s rights in the ICANDY mark.  The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

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

 

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 10, 2012

 

 

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