Andis Company v. Lease Domains, Inc. / LeaseDomains.com
Claim Number: FA1210001465765
Complainant is Andis Company (“Complainant”), represented by Lori S. Meddings of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Lease Domains, Inc. / LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andis.co>, registered with GODADDY.COM, INC.
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 October 3, 2012; the National Arbitration Forum received payment on October 4, 2012.
On October 11, 2012, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <andis.co> 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 October 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@andis.co. Also on October 17, 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 November 14, 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 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 <andis.co> domain name is confusingly similar to Complainant’s ANDIS mark.
2. Respondent does not have any rights or legitimate interests in the <andis.co> domain name.
3. Respondent registered and used the <andis.co> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has rights in the ANDIS mark based on its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,215,675 registered November 9, 1982). Complainant has used the ANDIS mark in its hair grooming and styling tool business since 1923. Complainant uses the <andis.com> domain name for its company website.
Respondent uses the <andis.co> domain name to resolve to a website that displays a commercial search engine with links to websites, including those for Complainant’s competitors. The resolving website also includes an offer to purchase the domain name.
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 owns rights in the ANDIS mark pursuant to its USPTO registration. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007), where the panel stated that, as a result of the complainant’s registration with the United States federal trademark authority, complainant had rights in its mark.
Respondent’s use of Complainant’s entire mark with only the addition of the ccTLD “.co” renders the <andis.co> domain name identical to Complainant’s ANDIS mark. See Comfort24-7.com, LLC v. Rio, FA 1459524 (Nat. Arb. Forum September 25, 2012) (stating that merely adding the ccTLD “.co” creates a domain name identical to the complainant’s mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent is not commonly known by the <andis.co> domain name, because Respondent has not been granted permission to use Complainant’s ANDIS mark and the WHOIS information does not reflect the domain name. The WHOIS record identifies the registrant as “Lease Domains, Inc.,” which is dissimilar to the disputed domain name. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel concluded that the respondent failed to show rights or legitimate interest in the disputed domain name where there was no evidence showing the respondent was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <andis.co> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <andis.co> domain name, due to Respondent’s resolving website, which displays a commercial search engine, including links to websites that sell goods in competition with Complainant. Complainant argues that Respondent earns fees by maintaining a website that generates “click-through” revenue. The Panel finds that Respondent’s use does not demonstrate 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 H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The evidence shows that Respondent attempts to sell the <andis.co> domain name for “free” with a purchase of a $49.95 per month “website development service.” Complainant also provides evidence of a screenshot displaying a link to the GoDaddy site at which the domain name is up for auction. In Aha! – Agentur Fur Handelsmarketing GMBH v. Continue Software GmbH, FA 109376 (Nat. Arb. Forum May 24, 2002), the panel stated that the respondent’s willingness to lease the domain name is evidence of bad faith registration and use. The Panel finds that Respondent’s offer to sell or lease the domain name supports a finding that Respondent registered and uses the <andis.co> domain name in bad faith under Policy ¶ 4(b)(i).
Respondent’s bad faith registration and use is also demonstrated by its use of the domain name to host hyperlinks to Complainant’s competitors selling similar products. Respondent no doubt collects fees in exchange for hosting the hyperlinks. The Panel thus concludes that Respondent’s use of the <andis.co> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant contends that Respondent possessed actual and constructive knowledge of Complainant’s ANDIS mark at the time Respondent registered the <andis.co> domain name, based on Complainant’s ANDIS trademark registration with the USPTO, and on Respondent’s use of the entire mark in the disputed domain name. The Panel agrees and finds that Respondent had actual knowledge of the ANDIS mark, a further showing of bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <andis.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 20, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page