Imation Corp. v. Jean Streut
Claim Number: FA0209000125759
PARTIES
Complainant
is Imation Corp., Oakdale, MN, USA
(“Complainant”) represented by Elizabeth
C. Buckingham, of Dorsey &
Whitney LLP. Respondent is Jean Streut, Paris, FRANCE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <imation-net.net>,
registered with iHoldings.com, Inc.
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 24, 2002; the Forum received a hard copy of the
Complaint on September 25, 2002.
On
September 25, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that
the domain name <imation-net.net>
is registered with iHoldings.com, Inc. and that Respondent is the current
registrant of the name. iHoldings.com, Inc. has verified that Respondent is
bound by the iHoldings.com, 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
September 26, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 16, 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@imation-net.net 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
October 24, 2002, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
1. Respondent’s <imation-net.net> domain
name is confusingly similar to Complainant’s registered IMATION family of
marks.
2. Respondent does
not have any rights or legitimate interests in the <imation-net.net> domain name.
3. Respondent
registered and used the <imation-net.net> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Imation Corp., holds many
registrations incorporating variations of its IMATION mark. Complainant
registered on the Principal Register of the United States Patent and Trademark
Office (“USPTO”) Reg. Nos. 2,282,195 and 2,355,495 for its IMATION mark on
September 28, 1999 and June 6, 2000, respectively. Variations of Complainant’s
IMATION mark have also been registered in over 60 jurisdictions worldwide.
In addition, Complainant currently has
registered over 75 variations of the domain name <imation.net>. These
sites offer information about Complainant’s computer software, data storage
products, computer consultation services and related goods and services in many
different languages.
Respondent, Jean Streut, registered its <imation-net.net> domain name on May 2, 2002. Currently,
Respondent’s domain name resolves to an online casino at
<diamonddollarcasino.com>, registered and operated by a third party,
which contains “pop-up” advertisements appearing once an Internet user reaches
the website. Nowhere on Respondent’s website or the associated online casino
will a user find the word “Imation”.
Respondent is not licensed or otherwise authorized to make any use of
the IMATION family of marks for any purpose.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in the
IMATION family of marks through registration with the USPTO and subsequent
continuous use of the marks.
A Panel can
find confusingly similarity when considering a domain name with characteristics
that consist of mere cosmetic differences between the name and the mark. The
addition of a generic word or term to a registered mark in a domain name,
especially if that mark is well known, is not a substantive enough alteration
to prevent a finding of confusing similarity. 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 Complainant combined with a generic word or term); see
also Hitachi, Ltd. v. Fortune Int’l
Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name
<hitachi2000.net> is confusingly similar to Complainant’s mark).
Furthermore,
as a generic top-level domain (such as “.net”) is required for every domain
name, this addition will not have any effect on whether Respondent’s domain
name is confusingly similar to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb.
11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as
a rule of thumb, that the domain name of a particular company will be the
company name [or trademark] followed by ‘.com.’”); 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). Finally, the addition of a hyphen to a
domain name that is confusingly similar to a trademark is inconsequential. See
Chernow Communications Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence
of punctuation marks, such as hyphens, does not alter the fact that a name is
identical to a mark").
The generic term “net” following
Complainant’s distinctive, registered IMATION mark in Respondent’s domain name
does nothing to diminish its confusing similarity with the mark. The dominant
feature of Respondent’s domain name remains the word “Imation”. Respondent’s
addition of the hyphen subsequent to the IMATION mark and the addition of “.net” after its domain name is also
inconsequential when determining confusing similarity.
Accordingly, the Panel finds that the <imation-net.net> domain name is
confusingly similar to Complainant’s distinctive and registered IMATION mark
under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or
services connected with the disputed domain name, the fact that it has been
commonly known by the domain name, or that it is making a legitimate
noncommercial or fair use of the domain name to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting the burden 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 in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
It is neither a bona fide offerings of
goods or services nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a confusingly similar
domain name is using that domain name to profit from a complainant’s registered
mark. 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 N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); 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).
In the present dispute, Respondent is
using its domain name in order to facilitate operation of an online gambling
service, presumably for a fee. Respondent gains additional revenue from
“pop-up” advertisements that appear when an Internet user reaches the website.
Such use does not constitute noncommercial or fair use of the domain name. In
addition, there appears to be no connection between the domain name <imation-net.net>
and any of the services provided by Respondent. Respondent is simply diverting
Internet users to its website by using Complainant’s registered mark without
offering any bona fide goods or services of its own. By submitting these facts
to the Panel, Complainant has shown that Respondent is not making a bona fide
offering of goods or services in facilitating access to an online casino, nor
is it fairly using its domain for legitimate noncommercial uses. See Société des Bains de Mer v. Int’l Lotteries,
D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where
Respondent used the <casinomontecarlo.com> and
<montecarlocasinos.com> domain names in connection with an online
gambling website).
Furthermore, Complainant has not licensed
Respondent to use its mark and can find no data supporting the proposition that
Respondent is commonly known by the domain name. Nowhere on Respondent’s
website does the word “Imation” appear. Due to the general popularity of the
very distinctive IMATION mark, it is doubtful that any entity could be commonly
known by Complainant’s mark. See Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark). These showings by
Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii),
successfully address any claims Respondent could make under the Policy. Thus,
Complainant adequately meets its burden of demonstrating Respondent’s lack of
rights and legitimate interest in the domain name.
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to the Complaint, Respondent fails to meet that burden.
Respondent submitted nothing to the Panel in response to the Complaint. In
these circumstances Respondent’s failure to affirmatively demonstrate any
rights or legitimate interests in its domain name results in a finding for
Complainant. See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interest in the domain name because Respondent never
submitted a Response nor provided the Panel with evidence to suggest
otherwise); see also Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
It is evidence that a domain has been
registered and used in bad faith when a Respondent registers a domain name that
is confusingly similar to a trademark despite actual or constructive notice of
the mark. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb.
Forum Mar. 1, 2002) (because of the fame attained by Complainant’s mark, it can
be presumed that Respondent knew of U-HAUL before registering the disputed
domain names); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the world-wide prominence of the mark and thus Respondent registered the
domain name in bad faith).
Similarly, Policy ¶ 4(b)(iv) illustrates
an example of bad faith use and registration when dealing with a popular mark.
The Policy states that when a domain name is used to intentionally attempt to
attract, “for commercial gain, Internet users to [Respondent’s] web site…by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of [Respondent’s] web site” it
is an example of bad faith use and registration. Taken together, the use of a
registered mark to divert Internet traffic to a website unrelated to and
unauthorized by the holder of the mark evidences bad faith use and
registration. See State Farm Mut. Auto.
Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding
that Respondent registered the domain name <statefarmnews.com> in bad
faith because Respondent intended to use Complainant’s marks to attract the
public to the website without permission from Complainant); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site); 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).
In this dispute, Respondent registered <imation-net.net>
years after Complainant registered its distinctive mark. Furthermore,
Complainant had used this mark continually and globally for years prior to its
registration. Respondent’s use of the IMATION mark in its domain name, despite
being on actual or constructive notice of its registered status, evidences bad
faith. Furthermore, Respondent is taking advantage of the likelihood of
confusion as to the source, sponsorship, affiliation, or endorsement of its
website that results from holding a domain name that is confusingly similar to
a registered trademark. In attracting users via this confusion in order to earn
commercial profit through association with online gambling sites and
advertisements, Complainant has shown that Respondent both registered and has
continued to use its domain name in bad faith.
In light of Respondent’s failure to
respond in these proceedings, Complainant has shown sufficient evidence for the
Panel to conclude that Respondent both acquired and used <imation-net.net>
in bad faith. See Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse
inferences from Respondent’s failure to reply to the Complaint).
Accordingly, the Panel finds that
Respondent both registered and used its domain name in bad faith, and Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <imation-net.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 8, 2002
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