CWI Global Internet Technologies, Inc. v.
David Sheldon d/b/a Computer Wiz, Inc.
Claim
Number: FA0506000506826
Complainant is CWI Global Internet Technologies, Inc. (“Complainant”),
represented by R. Wayne Pritchard, of Ray, Valdez, McChristian & Jeans, P.C., 5822 Cromo, El Paso, TX 79912.
Respondent is David Sheldon d/b/a Computer Wiz, Inc. (“Respondent”), 1428 N Washtenaw, Chicago, IL 60647.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cwiwebhosting.com>, registered with Tucows
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 June
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 1, 2005.
On
July 1, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <cwiwebhosting.com> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is
bound by the Tucows 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
July 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 26, 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@cwiwebhosting.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
August 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cwiwebhosting.com>
domain name is confusingly similar to Complainant’s CWIHOSTING.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <cwiwebhosting.com> domain name.
3. Respondent registered and used the <cwiwebhosting.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, CWI
Global Internet Technologies, Inc., is a computer network service provider
whose activities include: the design, creation, and hosting of Internet
websites for others, providing network services, and domain name
registration. Complainant first started
using the CWIHOSTING.COM mark in August 1999 as a service mark, and has done so
continuously ever since Complainant registered the <cwihosting.com>
domain name. In August 2004,
Complainant filed an application to register the CWIHOSTING.COM mark (Ser. No.
78472323) with the United States Patent and Trademark Office (“USPTO”). Although the USPTO has not conferred rights
in the mark upon Complainant, the application has been thoroughly reviewed by
the attorneys in the USPTO office and is currently published for opposition.
Respondent
registered the <cwiwebhosting.com> domain name on June 17,
2003. The domain name resolves to a
website that offers competing web hosting services for a fee as well as various
general Internet provider 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. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. 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.").
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
asserts common law rights in the CWIHOSTING.COM mark. Under Policy ¶ 4(a)(i), Complainant need not hold a registered
trademark to establish rights in a mark so long as proof of the mark’s
secondary meaning exists. See
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
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). Complainant has presented
evidence of secondary meaning in the CWIHOSTING.COM mark. Complainant has used the mark continuously
since August 1999 in association with its web hosting activities. Continuous use establishes secondary meaning
in the CWIHOSTING.COM mark, which Respondent has failed to contest. As a result, the Panel finds that secondary
meaning exists in Complainant’s mark, thus conferring common law rights under
Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar.
13, 2003) (holding that the complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark).
Complainant
further asserts that Respondent’s <cwiwebhosting.com> domain name
is confusingly similar to Complainant’s established CWIHOSTING.COM mark. The disputed
domain name incorporates the entire mark while adding the generic term “web”
which further describes the business in which Complainant engages. Adding generic terms, particularly those
describing Complainant’s business, fails to properly distinguish Respondent’s
domain name from Complaint’s mark.
Therefore the Panel finds that Respondent’s <cwiwebhosting.com>
domain name is confusingly similar to Complainant’s CWIHOSTING.COM mark pursuant to Policy ¶ 4(a)(i). See Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interests in the disputed <cwiwebhosting.com>
domain name. Complainant’s assertion
constitutes a prima facie case under Policy ¶ 4(a)(ii), shifting the
burden onto Respondent to prove that rights or legitimate interests exist. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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 has no right or
legitimate interest is sufficient to shift the burden of proof to the
respondent to demonstrate that such a right or legitimate interest does
exist). Because Respondent failed to
submit a response, the Panel construes this as evidence that Respondent lacks
rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name because the
respondent never submitted a response or provided the panel with evidence to
suggest otherwise).
Moreover,
Respondent is using the confusingly similar <cwiwebhosting.com>
domain name to operate a website that competes directly with Complainant’s
business. Through its resulting
website, Respondent offers server space with which consumers can operate
personal websites and e-mail accounts.
Such diversionary and unauthorized use of Complainant’s trademark is
neither a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). 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).”); see also Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
Finally, nothing in the record indicates that Respondent is
either commonly known by the disputed domain name or authorized to register
domain names featuring Complainant’s CWIHOSTING.COM mark. Therefore, the Panel finds that Respondent
has failed to establish rights or legitimate interests in the <cwiwebhosting.com> domain name pursuant to Policy ¶
4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <cwiwebhosting.com> domain name to
directly compete with Complainant’s business by offering identical web-hosting
services. The Panel finds such use
constitutes disruption, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); 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’s use of the disputed domain name to divert Internet users to a
website that provides competing services may confuse Internet users as to
Complainant’s sponsorship or affiliation with the resulting website. The Panel construes this diversionary use as
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
Finally, Respondent
registered the domain name with actual knowledge of Complainant’s rights in the
CWIHOSTING.COM mark. Because of the
obvious similarity between the information contained on Respondent’s website
and Complainant’s business, the Panel infers that Respondent had actual
knowledge of Complainant’s trademark rights.
Registration of a domain name that is confusingly similar to another’s
mark in spite of knowledge of the mark holder’s rights is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See 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”); see also 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).
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 <cwiwebhosting.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 12, 2005
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