BDO Seidman
LLP v. T. Allen d/b/a AMR
Claim
Number: FA0302000146230
Complainant is
BDO Seidman LLP, New York, NY (“Complainant”) represented by
Elizabeth A. Corradino, of Moses & Singer LLP. Respondent is
T. Allen d/b/a AMR, Las Vegas, NV (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bdoseidman.com> registered with Go
Daddy Software, 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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 19, 2003; the Forum received a hard copy of the
Complaint on February 21, 2003.
On
February 20, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <bdoseidman.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 27, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 19, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@bdoseidman.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 25, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <bdoseidman.com>
domain name is identical to Complainant’s BDO SEIDMAN mark.
2. Respondent does not have any rights or
legitimate interests in the <bdoseidman.com> domain name.
3. Respondent registered and used the <bdoseidman.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the BDO SEIDMAN mark in commerce for over 30 years. Complainant uses the
mark in connection with various services, including accounting services,
business management and consulting services, and financial consulting and
investment services.
Respondent
registered the <bdoseidman.com> domain name on November 1, 2001.
Respondent is using the disputed domain name to redirect Internet users to the
website <amrtax.com>, which offers similar financial services as
Complainant.
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.
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.
The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy. McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000). Complainant has established that it
has common law rights in the BDO SEIDMAN mark through continuous use in
commerce for over 30 years. Policy ¶ 4(a)(i) does not require that the
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. See British Broadcasting Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name
Dispute Resolution Policy does not require “that a trademark be registered by a
governmental authority for such rights to exist”).
Respondent’s <bdoseidman.com>
domain name is identical to Complainant’s mark because the disputed domain name
integrates Complainant’s entire mark, omits the space between the two words and
adds the generic top-level domain (“gTLD”) “.com” to the end of Complainant’s
mark. Neither the omission of the space between the words of Complainant’s mark
nor the addition of the gTLD to the end of the mark sufficiently distinguish
the domain name to absolve the confusing similarity between the domain name and
the mark. See Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark); see also Croatia Airlines
v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com>
is identical to Complainant's CROATIA AIRLINES trademark); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
Thus, the Panel
finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not supplied the Panel with a Response with regard to this proceeding.
Therefore, the Panel may accept the Complaint’s reasonable inferences and
allegations as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore, the
Panel may presume that Respondent has no rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii) because Respondent has not
come forward to answer the allegations in the Complaint. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because the Respondent never submitted a Response
nor provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent is
using the <bdoseidman.com> domain name to redirect Internet
traffic to the website <amrtax.com>, which provides similar financial
services as Complainant. Respondent’s use of the domain name to divert and
confuse Internet users into believing that they are being offered Complainant’s
services when, in fact, the services are being offered by Respondent,
Complainant’s competitor, is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2,
2000) (finding no bona fide use where Respondent used the domain name to divert
Internet users to its competing website); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Respondent has
provided the Panel with no evidence, and no proof can be gleaned from the
record to establish that Respondent is commonly known by BDO SEIDMAN or <bdoseidman.com>.
Therefore, Respondent has failed to establish its rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate noncommercial
or fair use); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Thus, the Panel
finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
using the <bdoseidman.com> domain name to redirect Internet
traffic to the website <amrtax.com>, which offers financial services in
competition with Complainant. The registration of a domain name primarily for
the purpose of disrupting the business of a competitor is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent likely registered the contested domain
name with the intent to disrupt Complainant's business and create user
confusion).
Furthermore,
because Respondent is using an identical domain name to Complainant’s mark and
offering similar services to Complainant’s services, the Panel may infer that
Respondent is attempting to attract Internet users by creating a likelihood of
confusion with Complainant’s mark for commercial gain, which is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial gain by creating a
likelihood of confusion with the Complainant’s mark and offering the same chat
services via his website as the Complainant); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or is sponsoring the services offered at the
site).
Thus, the Panel
finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bdoseidman.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
March 27, 2003
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