Drummond, Woodsum & MacMahon, P.A. v.
Domains to Develop
Claim
Number: FA0501000397023
Complainant is Drummond, Woodsum & MacMahon, P.A. (“Complainant”)
represented by Daina J. Nathanson, 245 Commercial Street, PO Box 9781,
Portland, ME 04104-5081. Respondent is Domains to Develop (“Respondent”)(no
address listed), artaxxa@yahoo.com.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <servingschool.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 7, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by email
to the National Arbitration Forum that the domain name <servingschool.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
January 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 2, 2005 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@servingschool.com by
email.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 9, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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." 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 <servingschool.com>
domain name is confusingly similar to Complainant’s SERVINGSCHOOLS.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <servingschool.com> domain name.
3. Respondent registered and used the <servingschool.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Drummond, Woodsum & MacMahon, P.A., is a law firm, which has specialized in
representing school districts and educators for over twenty-five years. In addition to its legal services,
Complainant has written and published books, videos and other publications on a
variety of topics of interest to both actual and prospective school leaders,
administrators and employees, including their respective attorneys, agents and
representatives. Likewise, since 1990,
Complainant has sponsored and conducted seminars and workshops on issues and
matters of interest to this same population.
Complainant owns
a registration for the SERVINGSCHOOLS.COM mark with the United States Patent
and Trademark Office (Reg. No. 2,593,537 filed February 3, 2000 and issued July
16, 2002).
Complainant has
been using the SERVINGSCHOOLS.COM mark in commerce since 2000. Since that time, Complainant has continually
and extensively used its mark in connection with school-related goods and
services.
Complainant’s
main website is operated at <servingschools.com>.
Respondent
registered the <servingschool.com> domain name on June 24,
2004. Respondent is using the domain
name to direct Internet users to a directory of listings and links to other
websites offering extremely varied goods and services related and unrelated to
Complainant.
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 with extrinsic proof in this proceeding that it has rights in the
SERVINGSCHOOLS.COM mark through registration with the United States Patent and
Trademark Office and by continuous use of its mark in commerce for the last
four and a half years. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’ but only that
Complainant has a bona fide basis for filing the Complaint in the first place).
The domain name
registered by Respondent is confusingly similar to Complainant’s
SERVINGSCHOOLS.COM mark because the domain name incorporates Complainant’s mark
and deviates from it only by eliminating the plural “s.” The mere deletion of the plural “s” does not
negate the confusing similarity of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Elder Mfg. Co., Inc. v. Recker, FA 98414
(Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute
that Respondent’s domain names are virtually identical, and thus confusingly
similar to Elder’s trademarks. Any superficial differences between the domain
names and the Elder trademarks are de minimis and of no legal
consequence.”); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
The failure of
Respondent to respond to the Complaint functions both as an implicit admission
that Respondent lacks rights and legitimate interests in the domain name, as
well as an arbitral grant to accept Complainant’s reasonable allegations as
true. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see
also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true); 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).
The only
evidence in the record that relates to the Panel’s determination of whether
Respondent is commonly known by the disputed domain name is the WHOIS
registration information. However, the
WHOIS information for the domain name lists the domain name registrant as
Domains to Develop, not “servingschools.com.”
Therefore, the Panel finds that the evidence fails to indicate that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii) based on the foregoing. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Respondent’s <servingschool.com>
domain name is confusingly similar to Complainant’s mark and is used to host a
search engine to link viewers to a variety of websites, including sites that
offer the same types of goods and services that Complainant offers online. Such use has consistently and frequently
been found not to be a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA
95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which
is blank but for links to other websites, is not a legitimate use of the domain
names); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that Respondent’s diversionary use of Complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of Complainant, was not a bona fide offering of goods or
services).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain name to direct Internet users to a website that
offers a search engine and links to education-related sites. Complainant’s business is focused on
education-related goods and services.
The Panel finds that, by creating confusion around Complainant’s mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to
offer goods and services similar to Complainant’s goods and services is
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
Respondent registered and used the domain name <eebay.com> in bad faith
where Respondent has used the domain name to promote competing auction sites); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent
registered the <servingschool.com> domain name for commercial
gain. Respondent’s domain name diverts
Internet users wishing to search under Complainant’s mark to Respondent’s
commercial website through the use of a domain name that is confusingly similar
to Complainant’s mark. Respondent’s
practice of diversion, motivated by commercial gain, through the use of a
confusingly similar domain name evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also State Farm Mut. Auto. Ins. Co.
v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that
Respondent registered the domain name <statefarmnews.com> in bad faith
because Respondent intended to use Complainant’s marks to attract the public to
the website without permission from Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <servingschool.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: February 23, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum