Auto-trol
Technology (Canada) Ltd. v. Yuen Wei
Claim
Number: FA0303000151121
Complainant
is Auto-trol Technology (Canada) Ltd., Calgary, AB, CANADA
(“Complainant”). Respondent is Yuen Wei, Baltimore, MD, USA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <geostation.com>,
registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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.
Hon. Ralph Yachin as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the "Forum") electronically on March 21,
2003; the Forum received a hard copy of the Complaint on March 24, 2003.
On March 21, 2003, Intercosmos Media
Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the
domain name <geostation.com> is registered with Directnic.Com and
that Respondent is the current registrant of the name. Directnic.Com has
verified that Respondent is bound by the Directnic.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 27, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of April 16, 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@geostation.com by e-mail.
Having received no Response from
Respondent, using the same contact details and methods as were used for the
Commencement Notification, the Forum transmitted to the parties a Notification
of Respondent Default.
On April 30, 2003, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
Forum appointed Hon. Ralph Yachnin as Panelist.
Having reviewed the communications
records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the ICANN Policy, ICANN Rules, the 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 <geostation.com>
domain name is identical to Complainant’s GEOSTATION mark.
2.
Respondent does
not have any rights or legitimate interests in the <geostation.com>
domain name.
3.
Respondent
registered and used the <geostation.com> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
Auto-trol Tech. Ltd., holds numerous trademark registrations for GEOSTATION in
the United States and Canada. More specifically, Complainant holds U.S. Patent
and Trademark Office (“USPTO”) Reg. No. 1,800,486 registered on the Principal
Register on October 26, 1993. Complainant’s USPTO registration indicates
Complainant’s GEOSTATION mark denotes “computer software for use in designing
and drafting maps and instruction manuals.” Complainant also holds Canadian
Trademark Reg. No. 334,380 for the GEOSTATION mark registered on November 20,
1987. Complainant’s registrations indicate that it has been consistently and
exclusively using the GEOSTATION mark in commerce since August 1, 1987.
Respondent,
Yuen Wei, registered <geostation.com> on April 17, 2002.
Complainant’s investigation of Respondent reveals that the subject domain name
resolves to a website that contains pornographic content. Respondent does not
use the “GEOSTATION” mark or name in any manner on its website.
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."
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.
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.
Complainant
has established rights in the GEOSTATION mark through registration and
continuous use of the mark in commerce since 1987. Further, Complainant’s
GEOSTATION mark is an invented, fanciful word that does not have a descriptive
or generic meaning. Fanciful marks are referred to as
the “strongest” of all marks, in that their novelty creates a substantial
impact on the buyer's mind – if sufficiently advertised and recognized. Being a
“strong” mark has significance, in that the mark will then be given an
expansive scope of judicial protection. McCarthy on Trademarks and
Unfair Competition, § 11:6 (4th ed. 2000).
Respondent’s
<geostation.com> domain name is identical to Complainant’s
GEOSTATION mark. Respondent’s second-level domain fails to deviate from
Complainant’s mark in any way. Additionally, top-level domains, such as “.com,”
are irrelevant when determining confusing similarity or identicality under the
Policy. Therefore, Respondent’s domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i). 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 Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb.
Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is
identical to Complainant’s TERMQUOTE mark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s
evidence and corresponding assertions are unanswered and uncontested.
Respondent’s failure to respond suggests that it lacks rights and legitimate
interests in the <geostation.com> domain name. Further, Respondent
has not successfully rebutted Complainant’s prima facie case; therefore,
all reasonable inferences made by Complainant will be accepted as true unless
clearly contradicted by the evidence. See 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”); see also
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that
Respondent has no rights or legitimate interests in the domain name because
Respondent never submitted a Response nor provided the Panel with evidence to
suggest otherwise).
Respondent’s
domain name resolves to a pornographic website. The explicit content displayed
on Respondent’s website tarnishes Complainant’s GEOSTATION mark and the
goodwill contained therein. The tarnishing of another’s mark occurs when “a
famous mark is improperly associated with an inferior or offensive product or
service.” Ringling Bros. V. B.E. Windows Corp., 937 F.Supp. 209
(S.D.N.Y. 1996). There is a likelihood that Complainant’s existing and
potential customers will visit Respondent’s website and believe that
Complainant is somehow connected with Respondent’s explicit materials.
Respondent’s opportunistic use of Complainant’s fanciful mark for commercial
purposes fails to establish rights or legitimate interests in the <geostation.com>
domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See MatchNet plc. v.
MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona
fide offering of goods or services to use a domain name for commercial gain by
attracting Internet users to third party sites offering sexually explicit and
pornographic material where such use is calculated to mislead consumers and to
tarnish Complainant’s mark); see also Nat’l Football League Prop., Inc. v.
One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that
Respondent had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where Respondent linked
these domain names to its pornographic website).
Nothing
before the Panel suggests Respondent is commonly known by the subject domain
name or the “geostation” second-level domain. As stated, Complainant’s
GEOSTATION mark is fanciful and unique to Complainant’s offerings. The more
distinctive the trademark is, the greater its influence in stimulating sales,
its hold on the memory of the purchaser and the likelihood of associating
similar designations on other goods with the same source. Therefore, Respondent
is unlikely to have any legitimate connection with the GEOSTATION mark, and
fails to establish rights in the <geostation.com> domain name
pursuant to Policy ¶ 4(c)(ii). See McCarthy on Trademarks and Unfair
Competition, § 11:6 (4th ed. 2000); see also Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Uncontested
evidence indicates that Respondent’s domain name resolves to a website that
displays pornographic content. Such use tarnishes the goodwill Complainant has
established in the GEOSTATION mark. Further, Complainant’s mark is an invented
word that holds no meaning apart from Complainant’s computer software and
related services. Respondent’s bad faith registration and use of the domain
name is articulated under Policy ¶ 4(b)(iv). Specifically, circumstances
indicate that Respondent registered the subject domain name to attract Internet
users to its website, for commercial gain, by creating a likelihood of
confusion with Complainant’s GEOSTATION mark. Respondent’s unauthorized
exploitation of Complainant’s mark is conduct that is explicitly proscribed by
the Policy. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Land O'
Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain
name confusingly similar to Complainant’s mark and used a confusingly similar
pornographic depiction of Complainant’s registered trademark on its website to
cause confusion as to the source or affiliation of the site).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <geostation.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
May 1, 2003
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