Deluxe
Corporation v. Dallas Internet
Claim
Number: FA0203000105216
PARTIES
Complainant is Deluxe Corporation, Shoreview, MN
(“Complainant”) represented by Linda M.
Byrne, of Merchant & Gould P.C. Respondent is Dallas Internet, Dallas, TX (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <deluxeform.com>,
registered with Tucows.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Jo Franklin as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
27, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.
On March 4, 2002, Tucows
confirmed by e-mail to the Forum that the domain name <deluxeform.com> is registered with Tucows and that
Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows
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 4, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 25, 2002 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@deluxeform.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 March 29, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Sandra Franklin 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Respondent’s <deluxeform.com> domain name is confusingly similar to
Complainant’s DELUXE trademark.
Respondent has no rights or legitimate interests in the disputed domain
name.
Respondent has registered and used the disputed domain name in bad faith.
B. Respondent
No Response was
received.
FINDINGS
Complainant
registered the DELUXE trademark at the United States Patent and Trademark
Office on August 22, 2000, Reg. No. 2,379, 596.
Complainant
has been using the DELUXE name in connection with its printed bank checks since
1915. Complainant owns businesses that
provide checks, business forms, labels, self-inking stamps, fraud prevention
services, and customer retention programs.
Complainant
is the market leader in its industry for bank checks and business forms, and it
has invested substantial sums of money into marketing and developing
substantial goodwill and customer loyalty under its trademark.
Complainant
has a “Deluxeforms Affiliate program” wherein a third party can link its
website to Complainant’s <deluxeforms.com> website, and that third party
will receive a commission for any sale of Complainant’s business forms that
originate from their link. In order to
become an affiliate, applicants must fill out and sign an application which
includes an agreement that the affiliate will not register any confusingly
similar trademarks, service marks, or domain names, among other things.
In
August 2001, Complainant noticed that “National Promotions, 15312 Sunset Drive
#12, Miami, FL 33193,” an affiliate, had registered <deluxeform.com>, and was attempting to earn commission off
sales of Complainant’s forms emanating through this infringing domain name.
Dallas Internet is the Respondent in this case, but
Mike Torres, the listed regsitrant agent for “National Promotions,” shares the
same address as Respondent’s listed mailing address, and is presumed to be
Respondent, or connected with Respondent
Accord see Chanel, Inc. v.
Torres d/b/a Nat’l Promotions, Inc., D2000-1833, (WIPO Feb. 22,
2001). Moreover, Complainant alleges that Mike Torres has a history of
registering domain names that are variations of famous trademarks and service
marks, causing a likelihood of confusion.
Complainant sent three letters to three different
addresses of Respondent requesting Respondent transfer the disputed domain name
to Complainant. Sometime after August
2001, Respondent’s <deluxeform.com> domain name redirected to a search engine which
directs customers interested in complainant’s products to its competitors in
return for a fee. Subsequently,
Complainant sent out letters to Respondent on October 17, 2001 and November 21,
2001 requesting transfer, but these letters were returned.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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 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; and
(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.
Identical
and/or Confusingly Similar
Respondent’s
<deluxeform.com> domain name is confusingly similar to
Complainant’s DELUXE trademark because its incorporates the trademark in its
entirety merely adding a generic word and a generic top-level domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term); 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). Moreover, Internet users are likely to be confused by the disputed
domain name because the added word “form,” describes Complainant’s
product. See Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOT
mark).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent,
known as Dallas Internet Services, has not provided any evidence, nor is there
any in the record, that it is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Respondent’s
use of the confusingly similar domain name to divert Internet traffic to
Complainant’s competitors for a fee, as well as to make an unauthorized use of
Complainant’s mark to direct Internet traffic to Complainant indicates that
Respondent was not making a bona fide offering of goods pursuant to Policy ¶
4(c)(i). 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (finding that “unauthorized providing of information and
services under a mark owned by a third party cannot be said to be the bona fide
offering of goods or services”); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Respondent’s
use of the disputed domain name to link to a search engine directing Internet
users to other websites indicates that it was not using it for a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that
use of the domain name to direct users to other, unconnected websites does not
constitute a legitimate interest in the domain name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv), because it used Complainant’s trademark to attract Complainant’s
customers to its own site to receive a commission from Complainant. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users
seeking the Complainant’s site to its website for commercial gain). Moreover, even though Respondent initially
linked Complainant’s customers to Complainant’s website through its own site,
Respondent did not have permission from Complainant to do so. As a result, the registration and use of the
disputed domain name were in bad faith.
See State Farm Mut. Auto.
Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding
that the Respondent registered the domain name <statefarmnews.com> in bad
faith because Respondent intended to use Complainant’s marks to attract the
public to the web site without permission from Complainant).
Respondent’s unauthorized use of the
disputed domain name disrupted Complainant’s business, despite the fact that it
was initially linking Complainant’s customers to Complainant’s website. This activity is in bad faith pursuant to Policy ¶ 4(b)(iii). See Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000)
(transferring <nokias.com> from Respondent cellular phone dealer to
Complainant).
Finally, Complainant alleges that
Respondent is or is connected to Mike Torres, who has a history of registering
infringing domain names incorporating famous trademarks. This activity indicates bad faith use and
registration under Policy ¶ 4(b)(ii). See
Armstrong
Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon
others’ famous and registered trademarks).
Absent a contrary opinion by Respondent, the Panel will
accept Complainant’s assertions as true.
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”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly,
it is Ordered that the domain name <deluxeform.com>
be transferred from Respondent to Complainant
Sandra
Franklin, Panelist
Dated:
April 10, 2002
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