national arbitration forum

 

DECISION

 

Toastmasters International Corporation v. Petr Savin

Claim Number: FA1301001479492

 

PARTIES

Complainant is Toastmasters International Corporation (“Complainant”), represented by Jessica C. Bromall of Jeffer Mangels Butler & Mitchell LLP, California, USA.  Respondent is Petr Savin (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <talkingtoastmasters.com>, registered with ONLINENIC, INC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2013; the National Arbitration Forum received payment on January 11, 2013.

 

On January 14, 2013, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <talkingtoastmasters.com> domain name is registered with ONLINENIC, INC. and that Respondent is the current registrant of the name.  ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, 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 January 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2013 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@talkingtoastmasters.com.  Also on January 16, 2013, 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 February 8, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <talkingtoastmasters.com> domain name is confusingly similar to Complainant’s TOASTMASTERS mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <talkingtoastmasters.com> domain name.

 

3.    Respondent registered and used the <talkingtoastmasters.com> domain name in bad faith.

 

B.  Respondent failed to submit a timely Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TOASTMASTER mark (e.g., Reg. No. 386,814 registered April 22, 1941), its TOASTMASTERS mark (e.g., Reg. No. 555,137 registered February 19, 1952), and its TOASTMASTERS INTERNATIONAL mark and design (e.g., Reg. No. 562,904 registered August 12, 1952).  Complainant uses the marks in connection with speaking and leadership training programs, and created a podcast titled “Talking Toastmasters” in 2008.  Complainant used <talkingtoastmasters.com> and then <toastmasterspodcast.com> domain name to offer its products and services.

 

Respondent registered the <talkingtoastmasters.com> domain name in November 2011 and uses it to host a website containing adult-oriented content.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s owns rights in its TOASTMASTERS mark is through its multiple USPTO registrations, and it need not register its mark in Respondent’s country of residence in order to have rights in the mark.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Respondent’s <talkingtoastmasters.com> domain name is confusingly similar to Complainant’s TOASTMASTERS mark, as it only adds the descriptive term “talking,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a descriptive term and a gTLD to Complainant’s mark does not distinguish the <talkingtoastmasters.com> domain name from Complainant’s TOASTMASTERS mark under Policy ¶ 4(a)(i).  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); see also 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.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 contends that Respondent is not commonly known by the <talkingtoastmasters.com> domain name, nor does Respondent have authorization from Complainant to use the TOASTMASTERS mark in any way.  The WHOIS information reveals “Petr Savin” as the registrant, which does not indicate that Respondent is commonly known by the <talkingtoastmasters.com> domain name for the purposes of Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues that Respondent’s use of the <talkingtoastmasters.com> domain name to host a website that contains offensive content, including photographs of little girls wearing “skimpy” outfits and links to webpages featuring pornographic content, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  In Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), the panel stated that using the disputed domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The Panel finds that Respondent fails to use the <talkingtoastmasters.com> domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent demonstrates bad faith registration and use of the <talkingtoastmasters.com> domain name by its use of the domain to confuse consumers and lead them to adult-oriented content at the resolving website.  The Panel infers that Respondent collects fees for referring Internet users to the websites hyperlinked at the resolving webpage.  The Panel finds that Respondent’s efforts to generate income as a result of confusing Internet consumers and diverting them to its website is evidence of its bad faith registration and use under Policy ¶ 4(b)(iv).  See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).

 

The Panel finds that the adult-oriented content displayed at the resolving site is itself evidence that Respondent registered and uses the <talkingtoastmasters.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).

Complainant argues that Respondent was aware of Complainant’s rights in the TOASTMASTERS mark at the time Respondent registered the <talkingtoastmasters.com> domain name, based on its use of the TOASTMASTERS marks since 1924, and its federal trademark registrations since 1941.  Complainant asserts that Respondent could not have coincidentally selected the domain name, which Complainant previously owned and incorporates both Complainant’s entire mark and a term descriptive of Complainant’s services.  The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark when it registered the <talkingtoastmasters.com> domain name, a further indication of bad faith.  See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <talkingtoastmasters.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  February 15, 2013

 

 

 

 

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