Mayers Enterprises Inc. d/b/a
5DollarHosting.com v 5 Dollar Hosting c/o Zeeshan Ahmed
Claim Number: FA0302000146945
PARTIES
Complainant
is Mayers Enterprises Inc. d/b/a 5DollarHosting.com, Rockledge, FL, USA
(“Complainant”) represented by Craig
Mayers. Respondent is Zeeshan Ahmed
5DH.com, Karachi, PAKISTAN (“Respondent”) represented by Zeeshan Ahmed.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <5dollar-hosting.com>,
registered with Network Solutions, Inc., <5dh.com>, registered with Onlinenic, Inc. and <5dollar-hostings.com>,
registered with Gandi.
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.
Robert
T. Pfeuffer, Senior District Judge, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 27, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On
March 3, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <5dollar-hosting.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. On March 4, 2003, Onlinenic, Inc. confirmed by
e-mail to the Forum that the domain name <5dh.com>
is registered with Onlinenic, Inc. and that the Respondent is the current
registrant of the name. On March 10, 2003, Gandi confirmed by e-mail to the
Forum that the domain name <5dollar-hostings.com>
is registered with Gandi and that the Respondent is the current registrant of
the name. Network Solutions, Inc., Onlinenic, Inc. and Gandi have verified that
Respondent is bound by their respective registration agreements and that Respondent
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
March 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”), setting a deadline of March 31, 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@5dollar-hosting.com, postmaster@5dh.com and postmaster@5dollar-hostings.com
by e-mail.
An untimely Response was received on April
1, 2003. Because the response was not filed in a timely manner and mitigating
circumstances were not submitted by Respondent to excuse any late filing, the
Panel chooses to disregard the Respondent’s untimely response. See
UFCW Int’l Union v. Union Automation, FA 94665 (Nat. Arb. Forum June 8,
2000) (holding that an untimely Response without Motion or Affidavit does not
controvert Complainant’s allegations and proof and all reasonable inferences of
fact in the allegations of the Complaint will be taken as true); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (holding that without an adequate and
timely filed Response, all reasonable inferences of fact in the allegations of
the Complaint will be taken as true).
On April 7, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Robert T.
Pfeuffer, Senior District Judge as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The
Complainant alleges that the domain names in dispute are identical or
confusingly similar to the rights it has established in 5DOLLARHOSTING.COM and
5DH.COM.
2.
Complainant
also alleges that the Respondent lacks rights or legitimate interests in the
domain names.
3.
Complainant
further alleges that Respondent’s actions in registering the domain name
engaged in registration and use of the same in bad faith.
B.
Respondent
None considered due to late filing.
FINDINGS:
1. Identical and/or confusingly similar Policy¶4(a)(i)
The
Panel finds that the Complainant has established rights in the
5DOLLARHOSTING.COM mark through registration of that service mark on the
Principal Register of the U.S. Patent and Trademark Office, as well as through
use of the mark in commerce. See Koninklijke KPN N.V. v. Telepathy, Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require
that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction); see
also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that Complainant’s trademark or service
mark be registered by a government authority or agency for such rights to
exist. Rights in the mark can be
established by pending trademark applications).
The
Panel further finds that Respondent’s <5dollar-hosting.com> and <5dollar-hostings.com>
domain names are confusingly similar to Complainant’s 5DOLLARHOSTING.COM mark. See
InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding
that “[t]he domain name ‘info-space.com’ is identical to Complainant’s
INFOSPACE trademark. The addition of a
hyphen and .com are not distinguishing features”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug.
17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s
mark . . . does not prevent the likelihood of confusion caused by the use of
the remaining identical mark. The
domain name <creampies.com> is similar in sound, appearance, and
connotation”).
The
Panel finds that the Respondent’s <5dh.com> domain name is
confusingly similar to Complainant’s 5DOLLARHOSTING.COM mark. See
Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001 (finding
the domain name <ms-office-2000.com> to be confusingly similar even
though the mark MICROSOFT is abbreviated); see
also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001)
(finding that the <mnlottery.com> domain name is confusingly similar to
Complainant’s MINNESOTA STATE LOTTERY registered mark).
2.
Rights
or Legitimate Interests Policy
¶ 4(a)(ii)
The Panel finds that Respondent’s use of
the disputed domain names causes actual consumer confusion with Complainant’s
business, and that as the disputed domain names compete with Complainant,
Respondent lacks rights or legitimate interests in the domain names. See
Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000)
(finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to
find a bona fide offering of services in a respondent’s operation of web-site
using a domain name which is confusingly similar to the Complainant’s mark and
for the same business”).
In addition, the Panel agrees with the
Complainant that Respondent should have been aware of Complainant’s rights in
the 5DOLLARHOSTING.COM mark, and that Respondent is not commonly known by the
disputed domain names. See RMO, Inc. v. Burbidge, FA 96949
(Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
3. Registration and Use in Bad Faith Policy
¶4(a)(iii)
The Panel concludes that Complainant is
correct in that Respondent’s WHOIS contact information is contradictory, and
this misleading information evidences bad faith registration of the domain
names. See The Trustees of the Trust Number SR-1 v. Turnberry, Scotland Golf
and Leisure, FA 122224 (Nat. Arb. Forum Nov. 3, 2002) (“The register
maintained by an ICANN registrar must provide accurate information as to the
identity of domain registrants. The
human person or other legal entity shown as the registrant must be assumed to
be such by third parties seeking to ascertain a registrant’s identity by such
means as a Whois search. There is no
place for the registration of bare trustees or agents for unnamed
beneficiaries, principals or would-be purchasers . . . the register is
everything: no unregistered interests can prevail against the interests of bona
fide third parties relying on information available on the register for all the
world to see”); see also Home Director,
Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that
providing false or misleading information in connection with the registration
of the domain name is evidence of bad faith).
The Panel finds that Respondent
registered the disputed domain names to disrupt the Complainant’s business and
inasmuch as Respondent competes with Complainant, this evidences bad faith use
and registration pursuant to Policy ¶ 4(b)(iv). See 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); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc.,
FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of
variation from Complainant’s marks suggests that Respondent, Complainant’s
competitor, registered the names primarily for the purpose of disrupting
Complainant’s business).
The Panel finds that Respondent
deliberately chose to register domain names that create a likelihood of
confusion between the domain names and Complainant’s services, and as this was
done for commercial gain, Respondent’s activities evidence bad faith use and
registration pursuant to Policy ¶ 4(b)(iv).
See Drs. Foster & Smith, Inc.
v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain); see also
Indentigene, 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).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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
PANEL ENTERS THE FOLLOWING CONCLUSIONS AS MATTERS OF LAW:
The
Panel concludes that the domain names registered by the Respondent are in fact identical
and/or confusingly similar to those of the Complainant.
The Panel concludes that the Respondent
has no rights or legitimate interests in the domain names <5dollar-hosting.com>,
<5dh.com> and <5dollar-hostings.com>.
The Panel concludes that the Respondent
has in fact registered and used the disputed domain names in bad faith.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <5dollar-hosting.com>, <5dh.com> and <5dollar-hostings.com> domain
names be TRANSFERRED from Respondent
to Complainant.
ROBERT T. PFEUFFER, Senior District
Judge, Panelist
Dated: April 21, 2003
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