Guthy-Renker Corporation v. Four
Crown-Universal Domains
Claim Number: FA0203000106111
PARTIES
Complainant
is Guthy-Renker Corporation, Palm
Desert, CA (“Complainant”) represented by Daniel
M. Cislo, of Cislo & Thomas LLP. Respondent is Four Crown-Universal Domains, Vancouver, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <guthy-renker.cc>,
registered with Sams Direct.
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 26, 2002; the Forum received a hard copy of the
Complaint on March 28, 2002.
On
April 4, 2002, Sams Direct confirmed by e-mail to the Forum that the domain
name <guthy-renker.cc> is
registered with Sams Direct and that Respondent is the current registrant of
the name. Sams Direct has verified that
Respondent is bound by the Sams Direct 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
April 5, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 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@guthy-renker.cc 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
May 7, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<guthy-renker.cc> domain name
is identical to Complainant's GUTHY-RENKER and GUTHY-RENKER INTERNET marks.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Complainant has used its GUTHY-RENKER and
GUTHY-RENKER INTERNET marks since 1994 in relation to the promotion and sale of
products outbound telemarketing, spot television commercials, direct mail,
direct response from television and radio and telephone, credit card
syndication and telephone solicitation.
Complainant is one of the world’s largest direct response television
companies annual sales in excess of $500 million. Complainant has registered both marks with the United States
Patent and Trademark Office as Registration Numbers 1,906,200 and 2,184,432 on
July 18, 1995 and August 25, 1998 respectively.
Respondent registered the disputed domain
name on May 4, 2000. Respondent is not
authorized by Complainant to use its marks, nor has it used the disputed domain
name in relation to any business, website or service.
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
Complainant has established that it has
rights to the GUTHY-RENKER and GUTHY-RENKER INTERNET marks through registration
and use. Furthermore, Respondent’s
domain name is identical to Complainant’s GUTHY-RENKER mark because it
incorporates the entirety of Complainant’s mark and merely adds the country
code top-level domain (cc TLD) “.cc.”
The addition of a cc TLD does not create a distinct mark capable of
overcoming a claim of confusing similarity.
See World Wrestling Fed'n Entm't., Inc. v.
Rapuano, DTV2001-0010 (WIPO May 23, 2001)
(finding that “[t]he addition of the country code top level domain (ccTLD)
designation <.tv> does not serve to distinguish those names from
Complainant’s marks since ‘.tv’ is a common Internet address identifier that is
not specifically associated with Respondent”); see also Clairol Inc. v. Fux,
DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name
<clairol.tv> is identical to Complainant’s CLAIROL marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. 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”).
Respondent has failed to use the disputed
domain name for any purpose even though it has held registration for two
years. Holding a domain name for two
years without establishing a website or any other type of use is not a bona
fide offering of goods or services and therefore Respondent has no rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Mehmet 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 is known to the Panel as Four
Crown-Universal Domains, and no evidence has been presented that it is commonly
known as <guthy-renker.cc>. Therefore, Respondent has no rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See 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); see also Hartford Fire Ins.
Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding
that Respondent has no rights or legitimate interests in domain names because
it is not commonly known by Complainant’s marks and Respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use).
Furthermore, the disputed domain name is
identical to Complainant’s mark and therefore will cause confusion as to the
source, sponsorship and affiliation of Respondent’s domain name. This confusion will divert Complainant’s
customers to Respondent’s domain name.
This type of use is not considered to be a legitimate noncommercial or
fair use giving rise to rights and legitimate interests pursuant to Policy ¶
4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000)
(finding no rights in the domain name where Respondent has an intention to
divert consumers of Complainant’s products to Respondent’s site by using
Complainant’s mark); see also Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
The <guthy-renker.cc> domain name is identical to Complainant's mark
and the Internet user will likely believe that there is an affiliation between
Respondent and Complainant.
Registration of the <guthy-renker.cc>
domain name despite its identicalness to Complainant’s mark is evidence of bad
faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
Respondent has held the disputed domain
name for two years and has failed to do anything with it. This is passive holding and therefore
evidence of bad faith. See Mondich & Am. Vintage Wine Biscuits,
Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the
Respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith); see
also 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”).
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 <guthy-renker.cc> be transferred from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
May 10, 2002
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