Telebrands Corporation v. Khurram Shahzad
c/o paranox
Claim
Number: FA0504000467078
Complainant is Telebrands Corporation (“Complainant”),
represented by Peter D. Murray of Cooper & Dunham LLP,
1185 Avenue of the Americas, New York, NY 10036. Respondent is Khurram
Shahzad c/o paranox (“Respondent”), Suit #1,
Rehmat Plaza, F-8/3, Islamabad, PK 54000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <telebrandsdubai.com>, registered with Onlinenic,
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 27, 2005.
On
April 25, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <telebrandsdubai.com> is registered
with Onlinenic, Inc. and that Respondent is the current registrant of the name.
Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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
April 29, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 19, 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@telebrandsdubai.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 25, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 <telebrandsdubai.com>
domain name is confusingly similar to Complainant’s TELEBRANDS mark.
2. Respondent does not have any rights or
legitimate interests in the <telebrandsdubai.com> domain name.
3. Respondent registered and used the <telebrandsdubai.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Telebrands Corporation, is engaged in the business of marketing and selling a wide
variety of consumer products, including, exercise equipment, personal grooming
products, household products and miscellaneous products. Since its inception in 1987, Complainant has
grown to be one of the recognized leaders in the direct marketing industry. Complainant sells its products through
direct response advertising, including through retail, television, print,
Internet, mail and telephone order services, and through national retail
stores.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the TELEBRANDS mark (Reg. No.1,811,677 issued December 14,
1993). Complainant has been using its
mark in commerce since September 1991.
Moreover, Complainant’s TELEBRANDS mark is registered in twenty-three other
countries ranging from Australia to Taiwan.
Complainant’s
success is based on part upon a marketing plan by which it spends a large
amount of money advertising products on television for direct response
orders. Complainant’s television
advertising also creates a demand for the product among consumers who then
purchase the product in retail stores.
Complainant’s products are located in the “As Seen on TV” areas in these
retail stores.
Complainant
operates its main website at the <telebrands.com> domain name.
Respondent
registered the <telebrandsdubai.com> domain name on August 23,
2004. Respondent is using the domain
name as a homepage for telemarketing in the United Arab Emirates and other
countries. The website offers unauthorized
versions of Complainant’s products for sale.
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’s
registration of the TELEBRANDS mark with the United States Patent and Trademark
Office and its use of the mark in commerce over the last fourteen years
establish Complainant’s rights in the mark.
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 and that a respondent has the burden of refuting
this assumption).
Respondent’s <telebrandsdubai.com>
domain name is confusingly similar to Complainant’s TELEBRANDS mark because the
domain name simply adds the geographic term “Dubai” and the generic top-level
domain (“gTLD”) “.com.” Neither the
adding of a geographic term nor the adding of a gTLD are sufficient to
distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26,
2000) (finding that the respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to the complainant’s mark
because “the combination of a geographic
term with the mark does not prevent a domain name from being found confusingly
similar”); see also Am.
Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb.
Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and
a geographic location are confusingly similar to the complainant’s mark); see
also 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).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made 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 Vertical 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 reasonable inferences of fact
in the allegations of the complaint 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 the complainant’s allegations are true unless clearly
contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, the respondent failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
In the WHOIS
contact information, Respondent lists its name as “Khurram Shahzad c/o paranox.” However, since Respondent failed to respond
to the Complaint, there has not been any affirmative evidence provided to the
Panel showing that Respondent was ever commonly known by the disputed domain
name. Moreover, Complainant’s first use
of the TELEBRANDS mark in commerce and its registration of the mark predates Respondent’s
registration of the domain name. Thus,
the Panel concludes that Respondent has not been commonly known by the domain
name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” is one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where a respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Respondent’s use
of the infringing <telebrandsdubai.com> domain name to offer and
advertise counterfeit versions of Complainant’s products is not 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). Respondent makes opportunistic use of
Complainant’s mark in order to capitalize on the goodwill and fame associated
with the TELEBRANDS mark. Thus, the
Panel finds that Respondent lacks rights and legitimate interests in the domain
name under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (finding the
respondent’s use of the confusingly similar domain name <hpmilenium.com>
to sell counterfeit versions of the complainant’s HP products was not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where a respondent generated commercial gain by
intentionally and misleadingly diverting users away from the complainant's site
to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of [a] web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <telebrandsdubai.com> domain name, which is confusingly
similar to Complainant’s TELEBRANDS mark, to operate a website that offers
counterfeit versions of Complainant’s products. Such use constitutes disruption and is evidence that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA
94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of
variation from the complainant’s marks suggests that the respondent, the
complainant’s competitor, registered the names primarily for the purpose of
disrupting the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding a respondent acted in bad faith
by attracting Internet users to a website that competed with the complainant’s
business).
Since
Respondent’s domain name is confusingly similar to Complainant’s mark, Internet
uses accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting commercial website. Thus, Respondent’s commercial and opportunistic use of the
disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website
<fanuc.com> because customers visiting the site were confused as to the
relationship between the respondent and the complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where a respondent attempted
to attract customers to its website located at <efitnesswholesale.com>,
and created confusion by offering similar products for sale as the
complainant).
Furthermore,
Respondent registered the <telebrandsdubai.com> domain name with
actual or constructive knowledge of Complainant’s rights in the TELEBRANDS mark
due to Complainant’s registration of the mark with the United States Patent and
Trademark Office. Moreover, the Panel
infers that Respondent registered the disputed domain name with actual
knowledge of Complainant’s rights in the mark due to the obvious connection
between the content advertised on Respondent’s website and Complainant’s
business. Thus, the Panel finds that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the complainant’s mark when it registered the subject
domain name”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <telebrandsdubai.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
June 8, 2005
National Arbitration Forum