FatWallet, Inc. v. Admin c/o LaPorte
Holdings
Claim
Number: FA0504000467805
Complainant is FatWallet, Inc. (“Complainant”), represented
by Craig P. Thomas, 2902 McFarland Rd, Suite 400,
Rockford, IL 61107. Respondent is Admin c/o LaPorte Holdings
(“Respondent”), 5482 Wilshire Blvd., #1928, Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <fatwallett.com>, <fatwally.com>,
and <fatwalley.com>, registered with Nameking.com, 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 electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 27, 2005.
On
April 28, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <fatwallett.com>, <fatwally.com>,
and <fatwalley.com> are registered with Nameking.com, Inc. and
that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that
Respondent is bound by the Nameking.com, 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 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 25, 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@fatwallett.com, postmaster@fatwally.com, and
postmaster@fatwalley.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
June 2, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fatwallett.com>,
<fatwally.com>, and <fatwalley.com> domain names are
confusingly similar to Complainant’s FATWALLET mark.
2. Respondent does not have any rights or
legitimate interests in the <fatwallett.com>, <fatwally.com>,
and <fatwalley.com> domain names.
3. Respondent registered and used the <fatwallett.com>,
<fatwally.com>, and <fatwalley.com> domain names in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
FatWallet, Inc., is in the business of providing online coupons at its
<fatwallet.com> domain name.
Complainant holds a trademark registration with the United States Patent
and Trademark Office for the FATWALLET mark (Reg. No. 2,609,874 issued May 28,
2002).
Respondent
registered the <fatwally.com>
domain name on December 29, 2002, the <fatwallett.com>
domain name on February 13, 2003, and the <fatwalley.com> domain
name on October 5, 2004. Respondent is
using the disputed domain names to redirect Internet users to a website
featuring links to products and services similar to those offered by
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 with extrinsic proof in this proceeding that it has rights in the
FATWALLET mark through registration with the United States Patent and Trademark
Office and by continuous use of its mark in commerce. 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. The respondent has the burden of refuting this assumption).
Respondent’s <fatwallett.com>,
<fatwally.com>, and <fatwalley.com> domain names are
confusingly similar to Complainant’s FATWALLET mark because the domain names
incorporate Complainant’s mark in its entirety and simply add the letters “l”
and “t” to the mark in the <fatwallett.com> domain name, remove
the letters “e” and “t” from the mark and add the letter “y” to the mark in the
<fatwally.com> domain name, and replace the letter “t” in the mark
with the letter “y” in the <fatwalley.com> domain name. The addition, deletion and replacement of
letters in Complainant’s mark does not negate the confusingly similar aspects
of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain
name confusingly similar to
Complainant's BELKIN mark because the name merely exchanged the letter “i” in
Complainant's mark with the letter “e”); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the complainant’s
STATE FARM mark).
Furthermore, Respondent’s addition of the generic top-level domain
“.com” in the disputed domain names to Complainant’s FATWALLET mark does not negate the confusingly similar aspects of
Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v.
Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it
is a “well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights to or legitimate interests in the <fatwallett.com>,
<fatwally.com>, and <fatwalley.com> domain names. When a complainant has made a prima facie
case in support of its allegations, the burden shifts to the respondent to show
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Since Respondent has not
responded to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See 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
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 Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they do not have rights or
legitimate interests in the domain names).
Furthermore,
since Complainant made the prima facie showing and Respondent failed to
respond, the Panel is entitled to accept all reasonable allegations and
inferences in the Complaint as true. 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 Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two
inferences based on the respondent’s failure to respond: (1) The respondent
does not deny the facts asserted by complainant, and (2) The respondent does
not deny conclusions which complainant asserts can be drawn from the facts).
Respondent is
using the <fatwallett.com>, <fatwally.com>, and <fatwalley.com>
domain names to redirect Internet users to a website featuring links to
products and services similar to those offered by Complainant’s business,
presumably with the purpose of earning a commission or pay-per-click referral
fee. The Panel finds that Respondent’s
use of domain names confusingly similar to Complainant’s registered mark to
redirect Internet users interested in Complainant’s products and services to a
website containing links to websites that offer similar products and services
is not in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (finding that the respondent’s diversionary use of the complainant’s mark
to attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
Nothing in the
record suggests that Respondent is commonly known by the <fatwallett.com>,
<fatwally.com>, or <fatwalley.com> domain name and
Respondent has provided no evidence to prove that it was commonly known by the
disputed domain names. Therefore, the
Panel finds that Respondent has not established rights to or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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 Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <fatwallett.com>, <fatwally.com>, and <fatwalley.com>
domain names to attract Internet users seeking goods and services under
Complainant’s FATWALLET mark to Respondent’s commercial website by creating a
likelihood of confusion between Complainant’s registered mark and the content
of Respondent’s website. Respondent
presumably uses the domain names to earn pay-per-click fees. The Panel finds that Respondent’s practice
of diversion for commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the 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 the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name, additional factors can also be
used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Additionally,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the FATWALLET mark due to Complainant’s
registration of the mark with the United States Patent and Trademark Office and
continuous use of the mark in commerce.
Furthermore, the Panel infers that Respondent had actual knowledge of
Complainant’s rights in the mark due to the obvious connection between the
content featured on Respondent’s website and Complainant’s business. Registration of a domain name that is
confusingly similar to a mark, despite actual or constructive knowledge of
another’s rights in the mark, is evidence of bad faith registration and use
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 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 <fatwallett.com>, <fatwally.com>,
and <fatwalley.com> domain names be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 15, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum