C-Scape Consulting Corporation v. eye candy advertising
Claim Number: FA1208001459667
Complainant is C-Scape Consulting Corporation (“Complainant”), represented by Richard G. Tashjian of Tashjian & Padian, New York, USA. Respondent is eye candy advertising (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eyecandydigitalsignage.com>, registered with GoDaddy.com, 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.
John J. Upchurch as Panelist.
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 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <eyecandydigitalsignage.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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@eyecandydigitalsignage.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <eyecandydigitalsignage.com> domain name is confusingly similar to Complainant’s ICANDY mark.
2. Respondent does not have any rights or legitimate interests in the <eyecandydigitalsignage.com> domain name.
3. Respondent registered or used the <eyecandydigitalsignage.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
a) The mark is used in connection with digital signage.
b) Complainant owns the United States Patent and Trademark Office (“USPTO”) registration for the ICANDY mark (Reg. No. 3,094,598 registered May 23, 2006).
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.
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.”).
Complainant asserts that it has rights in the ICANDY mark which it uses in connection with digital signage. Complainant provides evidence of its ownership of the USPTO registration for the ICANDY mark (Reg. No. 3,094,598 registered May 23, 2006). Therefore, the Panel finds that Complainant has rights in the ICANDY 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).
Complainant contends that the <eyecandydigitalsignage.com> domain name is confusingly similar to the ICANDY mark. The Panel finds that Respondent’s swapping of the homophones “I” and “eye” does not distinguish the <eyecandydigitalsignage.com> domain name from the ICANDY mark. See Colibri Corp. v. Dinoia, FA 662937 (Nat. Arb. Forum May 5, 2006) (finding that the <calibri.com> domain name was visually and phonetically similar to the complainant’s COLIBRI mark). The Panel also finds that Respondent’s addition of the descriptive terms “digital” and “signage” does not negate a finding of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Finally, the Panel holds that Respondent’s addition of the generic top-level domain (“gTLD”) does not bar a finding of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <eyecandydigitalsignage.com> domain name is confusingly similar to the ICANDY mark under Policy ¶ 4(a)(i).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent does not have rights or legitimate interests in the <eyecandydigitalsignage.com> domain name. Complainant notes that Respondent does not have any intellectual property rights reflecting the <eyecandydigitalsignage.com> domain name, and Respondent is in no way associated with Complainant. The Panel notes that the WHOIS record for the disputed domain name lists “eye candy advertising” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <eyecandydigitalsignage.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding 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”).
Complainant contends that Respondent’s use of the <eyecandydigitalsignage.com> domain name is improper. According to Complainant, the disputed domain name resolves to a website where Respondent operates a competing digital signage business. Panels have found that the use of a disputed domain name to operate a competing business is not a use within the protective scope of Policy ¶¶ 4(c)(i) and 4(c)(iii). 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.”). Therefore, the Panel finds that Respondent’s use of the <eyecandydigitalsignage.com> domain name is neither 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 contends that Respondent registered and uses the disputed domain name in bad faith. Complainant asserts that the <eyecandydigitalsignage.com> domain name resolves to a website where Respondent markets competing digital signage products and services. Complainant argues that Respondent is profiting in bad faith upon the goodwill associated with the ICANDY mark by creating confusion as to the disputed domain name. The Panel finds that Respondent is intentionally attempting to attract, for commercial gain, Internet users to the <eyecandydigitalsignage.com> domain name by creating a likelihood of confusion with the ICANDY mark as to whether Complainant is the source or sponsor of the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the <eyecandydigitalsignage.com> domain name in bad faith under Policy ¶ 4(b)(iv). See 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).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the MEDIACOM mark prior to registration of the domain names. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eyecandydigitalsignage.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 5, 2012
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