Houghton Mifflin Company v. LaPorte
Holdings c/o Admin
Claim
Number: FA0504000469115
Complainant is Houghton Mifflin Company (“Complainant”),
represented by David Eber, of Houghton Mifflin Company, 222 Berkeley
Street, Boston, MA 02116. Respondent is
LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd., #1928, Los Angeles, CA
90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <prideferrel.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. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 2, 2005.
On
April 28, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <prideferrel.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. 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 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 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@prideferrel.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 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
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 <prideferrel.com>
domain name is confusingly similar to Complainant’s PRIDE FERRELL mark.
2. Respondent does not have any rights or
legitimate interests in the <prideferrel.com> domain name.
3. Respondent registered and used the <prideferrel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Houghton Mifflin Company, publishes college-level marketing textbooks written
by the author team of William M. Pride and O.C. Ferrell. Complainant has continuously published the
textbooks using the PRIDE FERRELL mark since 1977. Sales of Complainant’s PRIDE FERRELL textbooks have exceeded
750,000 since 1989, and as of June 2004, PRIDE FERRELL textbooks lead the
marketing college-level textbook market, with a 23 percent market share.
Respondent
registered the <prideferrel.com> domain name on October 23,
2002. Respondent is using the disputed
domain name to redirect Internet users to a website featuring links to
competitor’s products and services.
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 contends in this proceeding that it has common law rights in
the PRIDE FERRELL mark relating to the publication of marketing textbooks. Respondent
has failed to submit a response.
Therefore, the Panel is entitled to accept all reasonable allegations
and inferences in the Complaint as true.
Complainant has continuously
published its widely used college-level marketing textbooks under the PRIDE
FERRELL mark since 1977. Since 1989,
sales of Complainant’s PRIDE FERRELL textbooks have exceeded 750,000 units, and
as of June 2004, Complainant’s textbooks lead marketing textbooks in the United
States college market, with a 23 percent market share. Through continuous use of the PRIDE FERRELL
mark in commerce and secondary meaning associated with the mark, Complainant
has established common law rights in the PRIDE FERRELL mark. 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.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that the complainant has common law rights in the mark FISHTECH which
it has used since 1982); see also
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law”); see also Passion Group
Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that
the complainant established sufficient rights by virtue of its distribution and
advertising to enable it, at common law, to prevent another magazine by the
same name from being passed off as that of the complainant. Thus the
complainant established that it ‘has rights’ under the ICANN Policy).
The <prideferrel.com>
domain name is confusingly similar to Complainant’s PRIDE FERRELL mark because
the domain name incorporates Complainant’s mark in its entirety, omits the
space between the words “pride” and “ferrell” and deletes the letter “l” from
the word “ferrell.” These minor
differences do not negate the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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); see also Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum
Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to the complainant’s COMPAQ mark because the omission of
the letter “a” in the domain name does not significantly change the overall
impression of the mark); see also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com>, are common
misspellings and therefore confusingly similar).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is
. . . without legal significance since use of a gTLD is required of domain name
registrants"); see also Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <prideferrel.com>
domain name. Once Complainant
establishes a prima facie case, the burden shifts to Respondent to show
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel infers 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 does not have 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 does not have 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
does not have rights or legitimate interest is sufficient to shift the burden
of proof to the respondent to demonstrate that such rights or legitimate
interests do exist); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Nothing in the
record establishes that Respondent is commonly known by the <prideferrel.com>
domain name. Respondent is not licensed
or authorized to register or use a domain name that incorporates Complainant’s
mark. Therefore, the Panel concludes
that Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). 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
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the mark
precede the respondent’s registration; (3) the respondent is not commonly known
by the domain name in question).
Additionally,
Respondent is not using the <prideferrel.com> domain name in
connection with 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 is using a domain
name that is confusingly similar to Complainant’s mark to redirect Internet
users to a website featuring links to competitor’s products and services. See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide offering of
goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s
appropriation of the complainant’s mark to market products that compete with
the complainant’s goods does not constitute a bona fide offering of goods and
services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb.
Forum Jan. 10, 2003) (finding that the respondent had no rights or legitimate
interests in the disputed domain name where it used the complainant’s mark,
without authorization, to attract Internet users to its business, which competed
with the complainant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <prideferrel.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) by registering a domain name confusingly similar
to Complainant’s mark and using the domain name to redirect Internet users to a
website featuring links to competitor’s products and services. 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 the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Furthermore,
Respondent is capitalizing on the goodwill of the PRIDE FERRELL mark by using
the <prideferrel.com> domain name to redirect Internet users to a
website featuring links to competitor’s products and services. Since the disputed domain name contains a
confusingly similar version of Complainant’s mark, a consumer searching for
Complainant could become confused as to Complainant’s affiliation with the
resulting website. Therefore,
Respondent’s opportunistic use of the disputed domain name represents bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See 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)); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
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 <prideferrel.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
June 17, 2005
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