national arbitration forum

 

DECISION

 

Tom Douramakos v. The Job Shoppe

Claim Number: FA1303001492272

PARTIES

Complainant is Tom Douramakos (“Complainant”), represented by Kyle T. Peterson of Patterson Thuente Pedersen, PA, Minnesota, USA.  Respondent is The Job Shoppe (“Respondent”), Ontario.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tomdouramakos.com>, registered with GODADDY.COM, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2013; the National Arbitration Forum received payment on March 29, 2013.

 

On April 1, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <tomdouramakos.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tomdouramakos.com.  Also on April 3, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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

  1. Complainant
    1. Complainant, Tom Douramakos, is a worldwide expert in the field of mobile and travel technologies. Complainant co-founded GuestLogix, Inc. in 2002 and served as the company’s Chief Executive Officer and President until October 2012. Complainant continues to serve as the company’s director and continues to provide advisory services in the field of mobile and travel technologies.
    2. Complainant has common law rights to his name, as Complainant has used his name (“Tom Douramakos”) in connection with advisory services in the field of mobile and travel technologies since 1992.
    3. Respondent’s <tomdouramakos.com> domain name is confusingly similar to Complainant’s common law trademark as Respondent simply added the generic top-level domain (“gTLD”) “.com” to the domain name.
    4. Respondent should be considered as having no rights or legitimate interests with respect to the domain name.

                                          i.    Respondent was not commonly known by the domain name, and he did not acquire trademark or service mark rights therein.

                                         ii.    Respondent’s <tomdouramakos.com> domain name resolves to a website that features links to third-party products.

    1. Respondent’s <tomdouramakos.com> domain name should be considered as having been registered and being used in bad faith.

                                          i.    Complainant’s business has been disrupted by Respondent’s registration and use of the <tomdouramakos.com> domain name because the disputed domain name resolves to a website that features links to third-party products and services.

                                         ii.    Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the domain name.

    1. Respondent registered the domain name <tomdouramakos.com> on April 18, 2012.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.     Complainant has rights in its TOMDOURAMAKOS mark.

2.    Respondent’s <tomdouramakos.com> domain name is confusingly imilar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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."

 

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.

 

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).

 

Identical and/or Confusingly Similar

 

Complainant, Tom Douramakos, contends that he is a worldwide expert in the field of mobile and travel technologies. Complainant co-founded GuestLogix, Inc. in 2002 and served as the company’s Chief Executive Officer and President until October 2012. Complainant asserts that he continues to serve as the company’s director and continues to provide advisory services in the field of mobile and travel technologies. Complainant argues that he has common law rights to his name, as he has used his name (“Tom Douramakos”) in connection with advisory services in the field of mobile and travel technologies since 1992. The Panel  determines that Complainant is not required to register his trademark with a government agency in order to establish rights in the mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Therefore, the Panel determines that Complainant has common law rights in the TOM DOURAMAKOS trademark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <tomdouramakos.com> domain name is confusingly similar to Complainant’s common law trademark as Respondent simply added the gTLD “.com” to the domain name. The Panel notes that Respondent removes the space in Complainant’s TOM DOURAMAKOS common law trademark. The Panel holds that Respondent’s addition of a gTLD and the removal of spaces in  a mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel determines that Respondent’s <tomdouramakos.com> domain name is confusingly similar to Complainant’s TOM DOURAMAKOS common law trademark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent was not commonly known by the domain name, and he did not acquire trademark or service mark rights therein. Complainant asserts that the WHOIS information identifies “The Job Shoppe” as the registrant of the disputed domain name. See Complainant’s Exhibit D. Moreover, Complainant claims that it has not authorized or licensed Respondent to use Complainant’s mark in the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant contends that Respondent’s <tomdouramakos.com> domain name resolves to a website that features links to third-party products. The Panel notes that Respondent’s domain name resolves to a web page that features hyperlinks titled “K12 Online Academy,” “Are You Tough Enough?,” “Create your own village,” and others. See Complainant’s Exhibit E. The Panel holds that Respondent’s use of the <tomdouramakos.com> domain name to provide unrelated third-party hyperlinks is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Registration and Use in Bad Faith

 

Complainant argues that its business has been disrupted by Respondent’s registration and use of the <tomdouramakos.com> domain name because the disputed domain name resolves to a website that features links to third-party products and services. The Panel notes that Respondent’s domain name resolves to a web page that features hyperlinks titled “Arrest Records: 2 Secrets,” “Top 10 Golf Swing Killers,” “Las Vegas Show Tickets,” and others. See Complainant’s Exhibit E. The Panel finds that Respondent’s listing of unrelated hyperlinks competes with and disrupts Complainant’s business.  The Panel  concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant.  The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant asserts that Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the domain name. Complainant argues that Respondent is creating confusion by registering the confusingly similar domain name and using it to promote the products and services offered by third parties. The Panel notes that Respondent’s domain name resolves to a hyperlinks web page that features links titled “2013 Best Skin Tighteners,” “Install Google Chrome,” “Watch TV Episodes Online,” and others. See Complainant’s Exhibit E. Complainant contends that Respondent commercially benefits from this confusion by receiving click-through fees. Consequently, the Panel  concludes that Respondent has registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

DECISION

Having  established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tomdouramakos.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 15, 2013

 

 

 

 

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