national arbitration forum

 

DECISION

 

Pacific Leasehold Company, LLC, A California Limited Liability Company v. Scott Smith / Distinct Diamonds

Claim Number: FA1410001587467

PARTIES

Complainant is Pacific Leasehold Company, LLC, A California Limited Liability Company (“Complainant”), represented by R. Michael West of Law Offices Of R. Michael West, California, USA.  Respondent is Scott Smith / Distinct Diamonds (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fireandicediamond.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2014; the National Arbitration Forum received payment on October 29, 2014.

 

On October 30, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fireandicediamond.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 October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@fireandicediamond.com.  Also on October 31, 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 December 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.  The Panel has issued 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

A.   Complainant

Complainant asserts trademark rights in FIRE & ICE and alleges that the disputed domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant sells jewelry and precious metals by reference to the trademark  FIRE & ICE;

2.    Complainant owns United States Trademark Reg. No. 2,456,648, registered June 5, 2001 for FIRE & ICE;

3.    The disputed domain name was registered on July 5, 2007;

4.    The domain name resolves to a website where diamond rings are offered for sale; and

5.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.

 

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.

 

Trademark rights / confusing similarity

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its United States national registration for the trademark FIRE & ICE the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

Complainant submits that the domain name is confusingly similar to the FIRE & ICE mark because it merely spells out the ampersand, adds the meaningless “.com” suffix, and includes the descriptive term “diamond.”

 

Panel notes that for the purposes of assessing the confusing similarity of the trademark and the domain name, the generic top-level domain gTLD, “.com”, can be ignored (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Additionally, the substitution of the word “and” for the ampersand in the trademark is not only trivial, but also a necessity in the case of the domain name where such symbols cannot be used.  Finally, the addition of the word “diamond” is, in the context of Complainant’s offerings under the trademark, descriptive and devoid of distinctive value.  Accordingly, the Panel finds the disputed domain name to be confusingly similar to the trademark (see, Cargill, Inc. v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, was confusingly similar to the complainant’s mark; McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).

 

Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

 

The publicly available WHOIS information identifies Respondent as “Scott Smith / Distinct Diamonds” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  Complainant provides evidence that the domain name resolves to a website where goods competitive in the marketplace with those sold under the trademark by Complainant, namely, diamond rings, are on offer for sale.  Such use is not bona fide (see Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) where the panel found that there was no bona fide offering made when the commercial website was used to sell directly competing goods)

 

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.  In the absence of a Response, that case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above.  Panel has already found the disputed domain name to be confusingly similar to the trademark.  Panel accepts Complainant’s assertion as true that it is likely Respondent is benefiting financially from the described use of the domain name.  In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark (see, for example, Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) finding that the respondent’s use of <arizonashuttle.net> which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).

 

Complainant has proved bad faith use and registration and so has established the third and final aspect of the Policy.

 

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 <fireandicediamond.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Debrett G. Lyons, Panelist

Dated:  December 5, 2014

 

 

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