Cateye Co., Ltd. v. Sun-Tao Dung
Claim Number: FA1409001581006
Complainant is Cateye Co., Ltd. (“Complainant”), represented by Joseph M. Kuo of Olson & Cepuritis, Ltd., Illinois, USA. Respondent is Sun-Tao Dung (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cateyebikecomputer.com>, which is registered with Godaddy.Com, Llc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 22, 2014; the National Arbitration Forum received payment on September 22, 2014.
On September 23, 2014, Godaddy.Com, Llc confirmed by e-mail message ad-dressed to the National Arbitration Forum that the <cateyebikecomputer.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. 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 September 25, 2014, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 15, 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, adminis-trative, and billing contacts, and to postmaster@cateyebikecomputer.com. Also on September 25, 2014, the Written Notice of the Complaint, notifying Respond-ent of the e-mail addresses served and the deadline for a Response, was trans-mitted 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 October 23, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 cancelled.
A. Complainant
Complainant has used the CAT EYE mark since 1957 in its marketing of such products as reflectors for mounting on the frames and wheels of bicycles and battery and generator operated lights for bicycles.
Complainant is the owner of the CAT EYE trademark and holds registrations for the mark, which are on file with the United States Patent and Trademark Office (“USPTO”), including Registry No. 1,222,468, registered January 4, 1983.
Respondent’s <cateyebikecomputer.com> domain name was registered on December 18, 2008.
The domain name is confusingly similar to Complainant’s CAT EYE mark.
The domain name combines Complainant’s CAT EYE mark with “bike computer,” which is one of the principal product lines represented by the mark.
Respondent has not been commonly known by the <cateyebikecomputer.com> domain name.
Respondent is not affiliated with Complainant in any way.
Respondent is not authorized by Complainant to use its CAT EYE mark.
Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent seeks commercial gain from its wrongful use of the domain name by misleading and diverting Internet users to the web site resolving from it.
Respondent has no rights to or legitimate interests in the domain name.
The products advertised for sale on Respondent’s website appear to be Com-plainant’s products, but it is unknown whether they are Complainant’s genuine products or instead counterfeits.
Respondent knew of Complainant and Complainant’s CAT EYE mark when Respondent registered the <cateyebikecomputer.com> domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 CAT EYE trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding that a UDRP complainant had established rights in its trademarks for purposes of Policy ¶ 4(a)(i) by reason of its registrations of those marks with the USPTO).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the file that Respondent’s <cateyebikecomputer.com> domain name is confusingly similar to Complainant’s CAT EYE trademark. The domain name contains the entire CAT EYE mark, with only the deletion of the space between the terms of the mark, the addition of the term “bike computer,” which describes an aspect of Complainant’s business, and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main name, do not save it from the realm of confusing similarity under the stand-ards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of the mark of another and the addition to it of a gTLD do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
See also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that domain names incorporating a UDRP com-plainant’s entire EXPERIAN mark and adding the term “credit” were confusingly similar to that complainant’s mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name, that Respondent is not affiliated with Complainant in any way, and that Respond-ent is not authorized to use Complainant’s CAT EYE trademark. Moreover, the WHOIS information for the <cateyebikecomputer.com> domain name identifies the registrant only as “Sun-Tao Dung,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legit-imate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (finding, based on the available evidence, that a UDRP respondent was not commonly known by the domain name <thirteen.com>, so that it had failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that <cateyebikecomputer.com> domain name resolves to a web site that offers to sell Complainant’s products without authorization from Complainant. This employment of the domain name is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Pol-icy ¶ 4(c)(iii). See, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel there finding that a respondent’s use of a domain name which was confusingly similar to the mark of a UDRP complainant in an attempt to profit by passing itself off as that complainant online was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <cateyebikecomputer.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as evidence of Respondent’s bad faith in the registration and use of the domain name. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’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).
We are also convinced by the evidence that Respondent’s employment of the <cateyebikecomputer.com> domain name, which is confusingly similar to Com-plainant’s CAT EYE trademark, is an attempt to profit from the confusion caused among Internet users as to the possibility of Complainant’s association with the domain name and resolving website. Under Policy ¶ 4(b)(iv), this, too, demon-strates Respondent’s bad faith in the registration and use of the domain name. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005):
[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the CAT EYE trademark when it registered the <cateyebikecomputer.com> domain name. This is further proof of Respond-ent’s bad faith in the registration and use of the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when registering the domain name).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <cateyebikecomputer.com> domain name be CANCELLED.
Terry F. Peppard, Panelist
Dated: October 30, 2014
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