Speedotrans S.A. (BVI) v Dave Behar
Claim Number: FA0303000150403
PARTIES
Complainant
is Speedotrans S.A. (BVI), Wickhams
Cay, Tortola, BRITISH VIRGIN ISLANDS (“Complainant”) represented by John L. Wollman, of Mundell Odlum &
Haws LLP. Respondent is Dave Behar, San Pedro, CA, USA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <idig.com>,
registered with Register.Com.
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 17, 2003; the Forum received a hard copy of the
Complaint on March 17, 2003.
On
March 17, 2003, Register.Com confirmed by e-mail to the Forum that the domain
name <idig.com> is registered
with Register.Com and that Respondent is the current registrant of the
name. Register.Com has verified that
Respondent is bound by the Register.Com 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
March 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 14,
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@idig.com by e-mail.
A
timely Response was received and determined to be complete on April 14, 2003.
A
timely Additional Submission was received April 18, 2003.
On April 18, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed John J. Upchurch
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name <idig.com> be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The domain name in dispute, <idig.com>, is identical or
confusingly similar to a mark in which Complainant has rights.
2.
Respondent has no rights or legitimate interests in the domain name.
3.
Respondent registered the disputed domain name in bad faith.
B.
Respondent
1.
The mark is not identical or confusingly similar under the circumstances
presented.
2.
Respondent has rights in and to the disputed mark.
3.
The disputed domain name was not registered in bad faith.
C.
Complainant’s Additional Submissions
1.
Respondent’s factual assertions regarding his use of the disputed domain
name are untrue.
2.
Cybersquatting is determined without regard to the goods or services of
the parties.
3. Respondent’s claims that he is owed over
$500,000 from Complainant, and holds a license agreement to the mark, are
irrelevant.
FINDINGS
The Panel finds for the Complainant, and
determines that the domain name should be transferred.
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.
Complainant,
Speedotrans S.A. (BVI), holds trademark registrations for the IDIG mark,
registered on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) as registration numbers 2,077,253 and 2,687,493. Additionally,
Complainant claims that the IDIG mark has been in continuous use since August
18, 1984. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat.
Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning”); see also Smart Design
LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶
4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but
only that Complainant has a bona fide basis for making the Complaint in the
first place).
Respondent’s
<idig.com> domain name is identical to Complainant’s IDIG mark
because, for the purposes of Policy ¶ 4(a)(i), top-level domains (such as
“.com”) are considered inconsequential. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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); see also Interstellar Starship Services Ltd. v.
EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is
the same mark" as EPIX).
Complainant asserts that Respondent lacks
rights and interests in the domain name because Respondent “has assigned away
all of his rights, interest, and goodwill in the ‘idig’ mark for $35,000.”
Complainant submitted documentary proof tending to show a chain of title that
illustrates that rights to the IDIG mark transferred from Respondent to
Complainant. Specifically, on February 28, 1992, Respondent assigned “the
entire right, title and interest . . . together with the goodwill” to the IDIG
trademark to an entity called Sports By Design. On June 25, 1995, Sports By
Design purportedly assigned all of its rights, interest and goodwill in the
IDIG mark to Mayan Wasel Raslan, and on December 26, 1995, Ms. Raslan
subsequently assigned all of her rights in the IDIG mark to Complainant.
Complainant further proved that
Respondent’s <idig.com> domain name misdirects Internet users to
Respondent’s <ions.com> domain name and corresponding website. Such circumstances put into question
Respondent’s rights under Policy ¶ 4(a)(ii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks); see also Ziegenfelder Co. v. VMH Enter., Inc.
D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
based on the fact that the domain names bear no relationship to the business of
Respondent and that Respondent would only legitimately choose to use
Complainant’s mark in a domain name if Respondent was seeking to create an
impression that the two businesses were affiliated); see also Great S.
Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>).
Complainant
asserts that Respondent has registered and used the <idig.com>
domain name in bad faith. Respondent admittedly had knowledge of Complainant’s
rights in the IDIG mark. Therefore, Respondent’s subsequent registration of the
domain name, despite knowledge of Complainant’s rights, constitutes bad faith
registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
There
is no doubt of Respondent’s actual knowledge of Complainant’s rights in the
IDIG mark due to the circumstances surrounding this dispute. See generally
Arab Bank for Inv. & Foreign Trade v.
Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and
use where Respondent was employed by Complainant’s business, was fully aware of
the name of her employer, and made no use of the infringing domain name); see
also Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding
that because Respondent was hired by Complainant to help design and register
Complainant’s websites, Respondent had intimate knowledge of Complainant’s
business and use of its TEENFLO mark.
Therefore, Respondent’s registration of
<teenflo.com> was in bad faith).
Further,
Respondent has also registered the <idig.us> domain name, but has yet to
create any website in conjunction with the domain name. The Panel finds that
Respondent’s registration of two domain names that incorporate Complainant’s
IDIG mark satisfies the requirements of Policy ¶ 4(b)(ii). More specifically,
it finds that Respondent has exhibited a pattern of registering domain names
with the intent to prevent Complainant from reflecting its IDIG mark in a
domain name. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000)
(finding that registering multiple domain names in a short time frame
indicates an intention to prevent the mark holder from using its mark and
provides evidence of a pattern of conduct); see also Pep Boys Manny, Moe, & Jack v.
E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that,
where Respondent registered many domain names, held them hostage, and prevented
the owners from using them, the behavior constituted bad faith).
Respondent
has intentionally attempted to attract Internet users to its website, for
commercial gain, by creating a likelihood of confusion with Complainant’s mark.
Respondent’s <idig.com> domain name misdirects potential “idig”
customers to Respondent’s <ions.com> domain name and corresponding
website. Such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent); see also 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).
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <idig.com>
domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch , Panelist
Dated: May 12, 2003
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