The Cartridge Depot, LLC v. Angelica Gomez / omegacartridgedepot
Claim Number: FA1401001541002
Complainant is The Cartridge Depot, LLC (“Complainant”), represented by Stephen A. Straub of Roylance, Abrams, Berdo & Goodman, L.L.P., Washington D.C., USA. Respondent is Angelica Gomez / omegacartridgedepot (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omegacartridgedepot.com>, registered with 1&1 Internet AG.
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 electronically on January 28, 2014; the National Arbitration Forum received payment on January 28, 2014.
On January 28, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <omegacartridgedepot.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 January 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@omegacartridgedepot.com. Also on January 28, 2014, 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 February 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <omegacartridgedepot.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CARTRIDGE DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been in business since at least 2004 and has rights in the CARTRIDGE DEPOT mark, used in connection with inkjet and toner cartridges and related services. Complainant owns a registration for the CARTRIDGE DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,007,431 registered Oct. 18, 2005).
Respondent’s <omegacartridgedepot.com> domain name is confusingly similar to Complainant’s CARTRIDGE DEPOT mark. The disputed domain name includes Complainant’s mark in its entirety. Respondent is not commonly known by the disputed domain, and Complainant has not authorized Respondent to use its CARTRIDGE DEPOT mark in any way. Respondent is using the <omegacartridgedepot.com> domain name to compete with Complainant, offering the same products and services as Complainant. In this regard, Respondent is disrupting Complainant’s business by using the disputed domain name to compete directly with Complainant by offering similar products and services as those offered by Complainant. Respondent is creating a likelihood of confusion with Complainant’s CARTRTDIGE DEPOT mark from which Respondent is unfairly obtaining commercial gain. Respondent had knowledge of Complainant’s mark prior to registering the <omegacartridgedepot.com> disputed domain name based on the strength of Complainant’s CARTRIDGE DEPOT mark and Respondent’s use of the disputed domain name to compete directly with Complainant. Respondent registered the <omegacartridgedepot.com> domain name on June 20, 2013.
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.”).
Complainant has rights in the CARTRIDGE DEPOT mark, used in connection with inkjet and toner cartridges and related services and owns a registration for the CARTRIDGE DEPOT mark with the USPTO (Reg. No. 3,007,431 registered Oct. 18, 2005). Therefore, Complainant has rights in the CARTRIDGE DEPOT mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The disputed domain name includes Complainant’s mark in its entirety. The disputed domain name also contains the generic term “omega,” the generic top-level domain (“gTLD”) “.com,” and the disputed domain name removes the space that exists in Complainant’s trademark between the words “cartridge” and “depot.” First, the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Next, the lack of spaces between words and the addition of a gTLD does is irrelevant for the purposes of confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”) Similarly, this Panel finds that Respondent’s <omegacartridgedepot.com> domain name is confusingly similar to Complainant’s CARTRIDGE DEPOT mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain, and Complainant has not authorized Respondent to use its CARTRIDGE DEPOT mark in any way. The WHOIS record for the disputed domain name lists “Angelica Gomez” as the domain name registrant and “omegacartridgedepot” as the registrant organization. Although the registrant organization name does incorporate the disputed domain name, past panels have not found a respondent to be commonly known as a disputed domain name without more affirmative evidence to support that assertion. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Therefore, because Respondent was not authorized by Complainant to use the CARTRIDGE DEPOT mark, and Respondent has not provided any response to explain its right or reason for using the CARTRIDGE DEPOT mark in its business name, the Panel finds that Respondent is not commonly known by the <omegacartridgedepot.com> domain name under Policy ¶ 4(c)(ii).
Respondent is using the <omegacartridgedepot.com> domain name to compete with Complainant, offering the same products and services as Complainant. Past panels have found that using a confusingly similar domain name to compete directly with a complainant does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the <omegacartridgedepot.com> domain name to compete directly with Complainant.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is disrupting Complainant’s business by using the disputed domain name to compete directly with Complainant. In previous cases, Panels have found that using a confusingly similar domain name to offer similar goods and services in direct competition with a complainant demonstrates bad faith via disruption pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, this Panel finds that Respondent registered and is using the <omegacartridgedepot.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is offering goods and services that directly compete with Complainant.
Respondent is using the <omegacartridgedepot.com> domain name to offer similar products and services as those offered by Complainant and is thereby creating a likelihood of confusion with Complainant’s CARTRTDIGE DEPOT mark from which Respondent is unfairly obtaining commercial gain. Such conduct has been found to demonstrate bad faith by attraction for commercial gain under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel holds that Respondent registered and is using the <omegacartridgedepot.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by operating a competing business with the disputed domain name.
Respondent had at least constructive knowledge of Complainant’s mark prior to registering the <omegacartridgedepot.com> disputed domain name based on the strength of Complainant’s CARTRIDGE DEPOT mark and Respondent’s use of the disputed domain name to compete directly with Complainant. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, it is clear that Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name due to the use made of the associated website. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omegacartridgedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 25, 2014
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