Dick Blick Holdings, Inc. v. Midnight
Media
Claim
Number: FA0303000151539
Complainant is
Dick Blick Holdings, Inc., Highland Park, IL (“Complainant”) represented
by Richard J. Musgrave, of Husch & Eppenberger, LLC. Respondent
is Midnight Media, Nevada City, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dickblickart.com>, registered with Tucows,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 25, 2003; the Forum received a hard copy of the
Complaint on March 28, 2003.
On
March 26, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <dickblickart.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, Inc. 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 31, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 21, 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@dickblickart.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 23, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <dickblickart.com>
domain name is confusingly similar to Complainant’s DICK BLICK ART MATERIALS
mark.
2. Respondent does not have any rights or
legitimate interests in the <dickblickart.com> domain name.
3. Respondent registered and used the <dickblickart.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dick Blick Holdings, Inc., holds U.S. Reg. No. 2,129,168 for the DICK BLICK ART
MATERIALS mark. The mark was registered by Complainant on the Principal
Register of the U.S. Patent and Trademark Office on January 13, 1998 for mail
order catalog services featuring artists materials and supplies and retail
store services in that industry.
Respondent,
Midnight Media, registered the <dickblickart.com> domain name on
April 4, 2002, and is not licensed or authorized to use Complainant’s
registered DICK BLICK ART MATERIALS mark for any purpose. Respondent has never
posted content at the disputed domain name.
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 DICK BLICK
ART MATERIALS mark through proof of registration of the mark on the Principal
Register of the U.S. Patent and Trademark Office, as well as through continuous
use of the mark in commerce.
Respondent’s <dickblickart.com> domain name is confusingly
similar to Complainant’s DICK BLICK ART MATERIALS mark. The only significant
difference between Complainant’s mark and Respondent’s domain name is the
omission of the word MATERIALS from the disputed domain name, as both the
elimination of the spaces in Complainant’s mark and the addition of the
top-level domain “.com” are standard features of any domain name. Respondent’s
removal of the word MATERIAL is immaterial in this instance, as the dominant
feature of the domain name remains the distinctive DICK BLICK portion of
Complainant’s mark. See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20,
2001) (finding that the <westjets.com> domain name is confusingly similar
to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see
also Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the
domain name <wellness-international.com> is confusingly similar to
Complainant’s “Wellness International Network”).
Accordingly, the
Panel finds that the <dickblickart.com> domain name is confusingly similar to Complainant’s DICK BLICK ART
MATERIALS mark under Policy ¶ 4(a)(i).
Respondent
failed to respond to the Complaint in this proceeding. As a result, if
Complainant is able to make a prima facie case against Respondent,
showing it has no rights or legitimate interests in the disputed domain name,
Complainant satisfies Policy ¶ 4(a)(ii). Complainant can make a prima facie
case by demonstrating that the three examples indicative of rights or
legitimate interests in a domain name listed in Policy ¶¶ 4(c)(i)-(iii) would
not be applicable to Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent has made no use of the disputed domain name since its
registration over a year ago. Respondent’s non-use of the domain name, absent
any evidence to the contrary, cannot be considered a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Boeing Co. v. Bressi,
D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests
where Respondent has advanced no basis on which the Panel could conclude that
it has a right or legitimate interest in the domain names, and no use of the
domain names has been established); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy”).
Respondent, named in the disputed domain name’s WHOIS contact
information as “Midnight Media,” does not appear to be “commonly known by” the
disputed domain name. Thus, the Panel finds that Policy ¶ 4(c)(ii) does not
apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies
that Respondent is ‘commonly known by’ the disputed domain name” as one factor
in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, 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").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<dickblickart.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s
passive holding of the <dickblickart.com> domain name is evidence that it registered and used the disputed domain name in bad faith. By
incorporating the distinctive portion of Complainant’s mark into its domain
name and then not making any use of the domain name for over a year, Respondent
provides sufficient evidence to support a finding of bad faith. See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount to the domain name
being used in bad faith”); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
The Panel thus
finds that Respondent registered and used the <dickblickart.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dickblickart.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 28, 2003
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