Health Devices Corporation d/b/a Doc
Johnson Enterprises v. Aspen S T C
Claim Number: FA0305000158254
Complainant is
Health Devices Corporation d/b/a Doc Johnson Enterprises, North
Hollywood, CA (“Complainant”) represented by Paul J. Cambria of
Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria LLP. Respondent is
Aspen S T C, New Port, RI (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <doc-johnson-sextoys.com> registered with Network
Solutions, Inc.
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 (the "Forum")
electronically on May 20, 2003; the Forum received a hard copy of the Complaint
on May 20, 2003.
On
May 23, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name <doc-johnson-sextoys.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
May 23, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 12, 2003 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@doc-johnson-sextoys.com 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
June 19, 2003, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <doc-johnson-sextoys.com>
domain name is confusingly similar to Complainant’s DOC JOHNSON mark.
2. Respondent does not have any rights or
legitimate interests in the <doc-johnson-sextoys.com> domain name.
3. Respondent registered and used the <doc-johnson-sextoys.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds two trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the DOC JOHNSON mark (Reg. Nos. 2,071,009 and 2,151,117
registered on June 17, 1997 and April 14, 1998, respectively) in relation to a
wide variety of adult novelty products and related goods. Complainant also owns
registrations for the DOC JOHNSON mark in Italy, Benelux, France, Germany,
Canada and the State of California. Complainant registered its domain name,
<docjohnson.com>, on October 20, 1998.
Respondent
registered the <doc-johnson-sextoys.com> domain name on November
3, 2000. The website that the disputed domain name resolves to offers a wide variety
of sex toys, novelty products and related goods in direct competition with
Complainant’s business.
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 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 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.
Complainant has
established that it has rights in the DOC JOHNSON mark through registration
with the USPTO and continuous use in commerce since at least as early as 1976.
Respondent’s <doc-johnson-sextoys.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name appropriates Complainant’s mark and adds two hyphens and the
combination of two generic words, “sex” and “toys.” The addition of the hyphens
does not significantly distinguish the domain name from the mark because the
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i). See Columbia Sportswear Co. v. Keeler,
D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY”); see also CBS Broad.,
Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that
putting a hyphen between words of the Complainant’s mark is identical to and
confusingly similar to Complainant’s mark).
Similarly the
addition of the generic words “sex” and “toy” does not differentiate the domain
name from the mark because the two words relate directly to Complainant’s
business of providing sex toys to the consuming public. See Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark); see also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity).
Accordingly,
the Panel finds that Complainant has established Policy ¶ 4(a)(i).
Responded has
failed to favor the Panel with a Response in this proceeding. Therefore, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true. 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”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Furthermore, the
Respondent’s failure to contest the allegations of the Complaint permits the
Panel to presume that Respondent lacks any rights to or legitimate interests in
the disputed domain name for purposes of Policy ¶ 4(a)(ii). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond).
Respondent’s use
of the <doc-johnson-sextoys.com> domain name to offer sex toys,
novelty products and related goods in direct competition with Complainant’s
business is not 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). See Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business”); see also Chanel,
Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of
Complainant’s mark to sell Complainant’s perfume, as well as other brands of
perfume, is not bona fide use).
Moreover, the
Respondent has proffered no proof and no evidence is apparent from the record
that suggests Respondent is commonly known by either DOC JOHNSON SEX TOYS or <doc-johnson-sextoys.com>.
Thus, Respondent has failed to establish its rights to or legitimate interests
in the disputed domain name with regard to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
Respondent’s
registration and use of a domain name confusingly similar to Complainant’s mark
to compete directly with Complainant in the sale of sex toys demonstrates
Respondent’s registration and use of the <doc-johnson-sextoys.com>
domain name in bad faith under Policy ¶ 4(b)(iv) because the record indicates
Respondent intended to attract Internet users to its website for commercial
gain by creating a likelihood of confusion with Complainant’s mark. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering
the <fossilwatch.com> domain name and using it to sell various watch
brands where Respondent was not authorized to sell Complainant’s goods); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Moreover,
because Respondent offers the same type of goods in competition with
Complainant at a domain name that is confusingly similar to Complainant’s mark,
the Panel may presume that Respondent registered the <doc-johnson-sextoys.com>
domain name primarily for the purpose of disrupting the business of a
competitor, which evidences bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from the Complainant to a competitor’s website
in violation of Policy 4(b)(iii)); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum
Jan. 4, 2001) (finding it "obvious" that the domain names were
registered for the primary purpose of disrupting the competitor's business when
the parties are part of the same, highly specialized field).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <doc-johnson-sextoys.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 1, 2003
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