Telebrands Corporation v. Khurram Shahzad
c/o Paranox Technologies
Claim
Number: FA0507000508528
Complainant, Telebrands Corporation (“Complainant”),
is 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 Technologies (“Respondent”),
Suit#1, Rehmat Plaza, F-8/3, Islamabad Punjab PK 46000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <telebrandsmiddleeast.com>, registered
with Onlinenic, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her 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 July
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 6, 2005.
On
July 5, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <telebrandsmiddleeast.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
July 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 27, 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@telebrandsmiddleeast.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 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 <telebrandsmiddleeast.com>
domain name is confusingly similar to Complainant’s TELEBRANDS mark.
2. Respondent does not have any rights or
legitimate interests in the <telebrandsmiddleeast.com> domain
name.
3. Respondent registered and used the <telebrandsmiddleeast.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Telebrands Corporation, markets and sells a wide variety of consumer products,
including exercise equipment, personal grooming products, and household
products. Complainant’s products have
included the famous Safety Can Opener, Static Duster, and Moving Men Furniture
Sliders. Complainant sells its products
through direct response advertising and through national retail stores such as
Target, Wal-Mart, Bed, Bath and Beyond, and Walgreen’s. Complainant’s products are sold in the “As
Seen on TV” product category.
Complainant
spends a large amount of money marketing its products on television for direct
response orders and to create product awareness among consumers, who later
purchase the products in retail stores.
Complainant markets its products throughout the world and licenses its
television infomercials to distributors worldwide.
Complainant
began operating under the mark TELEBRANDS in 1991 and holds a registration for
the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,811,677 issued December 14, 1993).
Moreover, Complainant’s mark is registered in twenty-three
countries. Complainant also sells its
products via the Internet at <www.telebrands.com>.
Respondent
registered the <telebrandsmiddleeast.com> domain name on October
8, 2004. Respondent is using the
website as a homepage for telemarketing in Duabi and other countries. The homepage offers for sale unauthorized
versions of Complainant’s products.
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’s
registration for its TELEBRANDS mark with the USPTO is sufficient to establish
a prima facie case of rights in the mark. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”). Because
Respondent failed to submit a response, Complainant’s presumption of rights is
undisputed. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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.”). Thus,
the Panel finds that Complainant has established rights for purposes of Policy
¶ 4(a)(i).
Complainant
argues that Respondent’s <telebrandsmiddleeast.com> domain name is
confusingly similar to its TELEBRANDS mark.
The disputed domain name incorporates Complainant’s mark in its entirety
and adds the geographic phrase “Middle East.”
The Panel holds that the addition of a geographic phrase to
Complainant’s mark is not sufficient to distinguish the domain name from the
mark. See VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word
“India” to the complainant’s mark); see also InfoSpace, Inc. v. domains Asia
Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may
believe that the website located at the <dogpileuk.com> domain name is
run by a United Kingdom branch or affiliate of Complainant. . . . Consequently,
the Panel finds that the geographic identifier “uk” does not significantly
distinguish Respondent’s domain name from Complainant’s mark under Policy ¶
4(a)(ii).”). Thus, the Panel concludes
that the <telebrandsmiddleeast.com> domain name is confusingly
similar to Complainant’s mark.
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<telebrandsmiddleeast.com> domain name. Such an assertion establishes a prima facie case and
shifts the burden to Respondent to demonstrate that it does have rights or
legitimate interests in the domain name.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach
is for respondents to seek to bring themselves within one of the examples of
paragraph 4(c) or put forward some other reason why they can fairly be said to
have a relevant right or legitimate interests in respect of the domain name in
question.
Id.; see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). The Panel will analyze
whether Respondent could meet its burden of establishing rights or legitimate
interests for purposes of Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain name to divert users to an
Internet site that features counterfeit products that directly compete with
Complainant’s products and services.
Because Respondent did not submit a response, the Panel must accept
Complainant’s description of Respondent’s website as accurate. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“Given Respondent’s failure to submit a substantive answer in a timely
fashion, the Panel accepts as true all of the allegations of the
complaint.”). The Panel holds that
selling such products is neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and
(iii). See Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”); see also
Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (finding that the respondent used a domain name for commercial benefit by
diverting Internet users to a website that sold goods and services similar to
those offered by the complainant and thus, was not using the name in connection
with a bona fide offering of goods or services nor a legitimate
noncommercial or fair use). Therefore,
the Panel concludes that Respondent does not have rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) or
(iii).
Complainant
further argues that Respondent is not commonly known by the disputed domain
name. In fact, Respondent’s WHOIS
information indicates that Respondent is known as “Khurram Shahzad.” Respondent’s failure to submit a response
leads this Panel to accept as true Complainant’s allegations and evidence that
Respondent is not commonly known by the disputed domain name. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forsm Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence”). Thus, the Panel concludes that Respondent is not commonly known
by the disputed domain name and, therefore, has not established rights or legitimate
interests for purposes of 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 Tercent Inc. v. Lee 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).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
demonstrates that Respondent registered and is using the <telebrandsmiddleeast.com>
domain name in bad faith because Respondent’s website offers infringing goods
that compete with Complainant’s. The
Panel holds that capitalizing on Complainant’s mark to offer competing goods in
an effort to harm Complainant’s business constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
Lambros v. Brown,
FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent
registered a domain name primarily to disrupt its competitor when it sold
similar goods as those offered by the complainant); 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).
Respondent is using the confusingly similar <telebrandsmiddleeast.com>
domain name to divert Internet users to Respondent’s commercial website in
competition with Complainant.
Furthermore, Respondent is unfairly and opportunistically benefiting
from the goodwill associated with Complainant’s TELEBRANDS mark to profit from
imitation products not manufactured by Complainant. Thus, the Panel finds that Respondent’s practice of diversion to
create a likelihood of confusion for commercial gain is evidence of bad faith
use and registration pursuant to Policy ¶ 4(b)(iv). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23,
2000) (transferring the <fossilwatch.com> domain name from the
respondent, a watch dealer not otherwise authorized to sell the complainant’s
goods, to the complainant); see 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); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant).
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 <telebrandsmiddleeast.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
August 12, 2005
National Arbitration Forum