Budget Blinds, Inc. v. Terranova Corporation Limited
Claim Number: FA1211001471154
Complainant is Budget Blinds, Inc. (“Complainant”), represented by James M. Mulcahy of Mulcahy LLP, California, USA. Respondent is Terranova Corporation Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <budgetblindsfranchise.net>, registered with Godaddy.Com, Llc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 15, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <budgetblindsfranchise.net> 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 November 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@budgetblindsfranchise.net. Also on November 19, 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 December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
Complainant owns the BUDGET BLINDS mark, under which nearly 900 franchises operate, offering products and services under the mark such as retailing, installation, and blinds service, and selling blinds, miniblinds, vertical blinds, and alternative window treatments. Complainant has been in business since October 5, 1992, and has used the domain name <budgetblinds.com> since April 24, 1996. Complainant owns rights in the BUDGET BLINDS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,813,191 registered December 21, 1993). Complainant’s BUDGET BLINDS mark has developed substantial value and goodwill. The franchises operating under the BUDGET BLINDS mark benefit from a nationally recognized brand.
Respondent registered the <budgetblindsfranchise.net> domain name and uses the domain to host a website that purports to belong to Complainant. The content at the resolving website offers a franchise opportunity with Complainant and attempts to attract prospective investors, with an online form for visitors to provide personal information to Respondent. Respondent intends to mislead investors and damages Complainant’s reputation and the goodwill in the BUDGET BLINDS mark. Respondent fails to use the <budgetblindsfranchise.net> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent attempts to attract consumers to its website to collect personal contact information from Internet users who are interested in franchise opportunities with Complainant. Respondent registered and uses the <budgetblindsfranchise.net> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BUDGET BLINDS mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <budgetblindsfranchise.net> domain name, and that Respondent registered and uses the domain name in bad faith.
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 BUDGET BLINDS mark through USPTO trademark registration (Reg. No. 1,813,191 registered December 21, 1993). Complainant has successfully established rights in its mark pursuant to Policy ¶ 4(a)(i) through its USPTO registration. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant is not required to register its mark in the same country where Respondent resides and operates for the purposes of Policy ¶ 4(a)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant contends that the <budgetblindsfranchise.net> domain name is confusingly similar to the BUDGET BLINDS mark. By using the Complainant’s mark without the spaces and adding two elements, the <budgetblindsfranchise.net> domain name is confusingly similar to Complainant’s BUDGET BLINDS mark pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element) see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The WHOIS information associated with the domain indicates that the registrant is “Terranova Corporation Limited.” The Panel therefore concludes that Respondent is not commonly known by the <budgetblindsfranchise.net> domain name pursuant to Policy ¶ 4(c)(ii) due to the WHOIS information for the domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <budgetblindsfranchise.net> domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent intends to mislead potential franchise investors into providing personal information at the resolving website. Complainant contends that Respondent damages upon the BUDGET BLINDS mark by collecting Internet users’ personal information at its website. Respondent’s use of Complainant’s mark at the resolving website to induce Internet users to submit personal information online demonstrates a failure to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ (c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s attempt to attract and collect personal information from potential investors interested in opening a franchise under Complainant’s mark in order to make a commercial gain amounts to bad faith registration and use. By generating revenue through attracting consumers to its website by using a confusingly similar domain name, Respondent registered and uses the <budgetblindsfranchise.net> domain name in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that Respondent creates a likelihood of confusion with Complainant’s mark and prominently displays the domain name at the resolving website to create the impression that website visitors are disclosing personal information to Complainant. The panel in Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006), stated that the respondent’s bad faith registration and use was apparent by its attempt to gain personal information of Internet users through a confusingly similar domain name. The Panel similarly concludes that Respondent registered and uses the <budgetblindsfranchise.net> domain name in bad faith under Policy ¶ 4(a)(iii) due to its use of the resolving website to extract consumers’ personal information in a “phishing” scheme.
The Panel finds 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 <budgetblindsfranchise.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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