The Decal World, Inc. v. Kevin Truax / InterTech Designs
Claim Number: FA1410001582773
Complainant is The Decal World, Inc. (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Kevin Truax / InterTech Designs (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therhinestoneworld.net>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <therhinestoneworld.net> 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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@therhinestoneworld.net. Also on October 3, 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 October 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following contentions:
1. Complainant has rights in the THE RHINESTONE WORLD mark and has used it for commercial purposes since January 2009.
a. Complainant uses the THE RHINESTONE WORLD mark to identify its online retail store services featuring customized design templates and supplies. See Complainant’s Annex A. Complainant’s business encompasses the production of customized apparel and decals, as well as the sale of its TRW Stone Wizard software.
b. Complainant owns registrations for the THE RHINESTONE WORLD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,331,283 registered May 7, 2013).
c. Respondent’s <therhinestoneworld.net> domain name is confusingly similar to Complainant’s THE RHINESTONE WORLD mark.
i. Respondent merely adds the generic top-level domain (“gTLD”) “.net” to Complainant’s registered mark.
ii. Respondent removes the spaces between the terms in Complainant’s THE RHINESTONE WORLD mark.
2. Respondent has no rights or legitimate interests in the <therhinestoneworld.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. The WHOIS information for Respondent’s disputed domain name gives no indication that Respondent is or has ever been known by the “THE RHINESTONE WORLD” mark
ii. Complainant has not authorized Respondent to use its mark in any way.
b. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services, nor is it a noncommercial or fair use.
i. Respondent attempts to divert Internet users to promote Respondent’s competitive design template and related “easy stone” computer software for its own commercial profit. See Complainant’s Annex F.
3. Respondent registered and is using the <therhinestoneworld.net> domain name in bad faith.
a. Respondent uses the disputed domain name to create revenue for itself by selling competing products under Complainant’s registered mark.
b. Respondent uses the disputed domain name to spread misinformation regarding Complainant’s business, with the intention of damaging its reputation.
c. Respondent had actual knowledge of Complainant and Complainant’s THE RHINESTONE WORLD mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in online retail store services featuring customized design templates and supplies, the production of customized apparel and decals and the sale of its TRW Stone Wizard software.
2.Complainant owns registrations for the THE RHINESTONE WORLD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,331,283 registered May 7, 2013).
3.Respondent’s <therhinestoneworld.net> domain name was registered on March 7, 2014.
4. Respondent is using the domain name to attempt to divert Internet users to promote Respondent’s competitive design template and related “easy stone” computer software for its own commercial profit.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it may rely. Complainant states that it uses the THE RHINESTONE WORLD mark to identify its online retail store services featuring customized design templates and supplies. See Complainant’s Annex A. Complainant explains that its business encompasses the production of customized apparel and decals, as well as the sale of its TRW Stone Wizard software. Complainant further contends that it has rights in the THE RHINESTONE WORLD mark and has used it for commercial purposes since January 2009. To support further its contention that Complainant has rights in its mark, Complainant provides evidence that it owns registrations for the THE RHINESTONE WORLD mark with the USPTO (Reg. No. 4,331,283 registered May 7, 2013. Panels have regularly found that providing evidence of a registration with the USPTO is sufficient to establish rights in a given mark under Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel agrees that Complainant has rights in the THE RHINESTONE WORLD mark under Policy ¶ 4(a)(i).
The second question that arises is whether the dispute domain name is identical or confusingly similar to Complainant’s the THE RHINESTONE WORLD mark. Complainant claims that Respondent’s <therhinestoneworld.net> domain name is identical to Complainant’s THE RHINESTONE WORLD mark. Complainant states that Respondent merely adds the gTLD “.net” to Complainant’s registered mark and removes the spaces between the terms in Complainant’s THE RHINESTONE WORLD mark. Prior panels have frequently found that these variations are insufficient to differentiate a disputed domain name from a given mark. See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). The Panel therefore concludes that Respondent’s <therhinestoneworld.net> domain name is identical to Complainant’s THE RHINESTONE WORLD mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s THE RHINESTONE WORLD trademark and used it in its domain name, without making any substantial changes to it , implying that the domain name is an official domain name of Complainant leading to an official website of Complainant;
(b) Respondent has then used the domain name to attempt to divert Internet users to promote Respondent’s competitive design template and related “easy stone” computer software for its own commercial profit;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant points out that the WHOIS information for Respondent’s disputed domain name gives no indication that Respondent is or has ever been known by the THE RHINESTONE WORLD mark. The Panel notes that “Kevin Truax” is listed as the registrant. Additionally, Complainant states that it has not authorized Respondent to use its mark in any way. Given Respondent’s failure to rebut the preceding allegations, the Panel determines that the weight of the evidence in this case compels the Panel to hold that Respondent is not commonly known by the <therhinestoneworld.net> domain name within the meaning of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response);
(e)Complainant also argues that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services, nor is it a noncommercial or fair use. Complainant alleges that Respondent attempts to divert Internet users to promote Respondent’s competitive design template and related “easy stone” computer software for its own commercial profit. See Complainant’s Annex F. The Panel notes Complainant’s Annex F to see that Respondent’s resolving website displays the heading “easy stone” and featuring various “designs of the day.” In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel held that the respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the complainant’s business, was not a bona fide offering of goods or services. The Panel similarly finds that Respondent’s use of the <therhinestoneworld.net> domain name to redirect Internet users to a website offering goods and services that are the same as Complainant’s represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and is using the <therhinestoneworld.net> domain name in bad faith under Policy ¶ 4(b)(iii) by redirecting Internet users to a website featuring services in direct competition with those offered by Complainant, thereby disrupting Complainant’s business. The Panel recalls that Complainant specifically alleges that Respondent is using the disputed domain name to redirect visitors to a website offering products directly competing with Complainant’s and that Respondent receives some form of consideration for driving traffic to the website of this competing firm. See Complainant’s Annex F. Past panel have found the registration of domain names that are confusingly similar to complainants’ marks, for the purpose of linking to the websites of complainants’ competitors, to represent bad faith registration and use under Policy ¶ 4(b)(iii). See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). As the Panel agrees that Respondent’s <therhinestoneworld.net> domain name improperly disrupts Complainant’s business, the Panel finds Respondent’s registration and use of the domains to be illustrative of bad faith according to Policy ¶ 4(b)(iii).
Secondly, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant’s marks and commercially benefitting from that confusion. Again, the Panel recalls that Complainant accuses Respondent of using the disputed domain name to redirect visitors to a website featuring products directly related to Complainant’s. See Complainant’s Exhibit H. Complainant also presumes that Respondent receives some form of consideration for driving traffic to the website of this competing firm. After taking note of the similarity between Respondent’s disputed domain name and Complainant’s corresponding trademark, the Panel reasons that Respondent intentionally registered the disputed domain name with the goal of creating a false association with Complainant. As the Panel reasons that Respondent created such confusion in an attempt to achieve some sort of pecuniary gain at the expense of Complainant, the Panel determines that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Thirdly, Complainant contends that Respondent was fully aware of Complainant and Complainant’s marks when it registered the disputed domain name. Complainant elaborates by contending that Respondent registered the disputed domain name with the intent to divert Internet users to Respondent’s website and that Respondent had constructive knowledge of Complainant and is mark due to Complainant’s registration with the USPTO and Complainant’s long-held rights in the mark. Additionally, Complainant states that Respondent’s undeniably similar website, offering competing products is further indication of Respondent’s knowledge. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here 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 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); 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).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s THE RHINESTONE WORLD trademark and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <therhinestoneworld.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 31, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page