MediaLive International, Inc. v Unasi
Inc.
Claim
Number: FA0507000520527
Complainant is MediaLive International, Inc. (“Complainant”),
represented by Robert W. Sacoff, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000,
Chicago, IL 60606. Respondent is Unasi Inc. (“Respondent”), Galerias
Alvear 3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <2005comdex.com>, <comdex2005.com>,
<comdex2006.com> and <comdex2007.com>, registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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 July
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 22, 2005.
On
July 22, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <2005comdex.com>,
<comdex2005.com>, <comdex2006.com> and <comdex2007.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 15, 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@2005comdex.com, postmaster@comdex2005.com,
postmaster@comdex2006.com and postmaster@comdex2007.com by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 24, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <2005comdex.com>,
<comdex2005.com>, <comdex2006.com> and <comdex2007.com>
domain names are confusingly similar to Complainant’s COMDEX mark.
2. Respondent does not have any rights or
legitimate interests in the <2005comdex.com>, <comdex2005.com>,
<comdex2006.com> and <comdex2007.com> domain names.
3. Respondent registered and used the <2005comdex.com>,
<comdex2005.com>, <comdex2006.com> and <comdex2007.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
MediaLive International, Inc., is a leading producer of information technology
and telecommunications trade shows and expositions with worldwide recognition
in the information technology field.
Since at least
as early as 1979, Complainant has continuously used the COMDEX mark in
connection with arranging and conducting trade shows, conferences, expositions,
seminars and related goods and services.
Complainant also
maintains a significant Internet presence through its website, located at the
<comdex.com> domain name.
Complainant has
registered its COMDEX mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. Nos. 1,153,368 issued May 6, 1981 and 1,515,874 issued December
6, 1988). Complainant’s registrations
for its COMDEX mark have achieved incontestable status pursuant to 15 U.S.C. §§
1065 and 1115(b).
Respondent
registered the <2005comdex.com>, <comdex2005.com>, <comdex2006.com>
and <comdex2007.com> domain names between July 5 and July 7,
2004. Respondent’s domain names resolve
to a website that features links to various third-party websites, including
websites operated by competitors of Complainant.
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 has
established rights in the COMDEX mark through registration of the mark with the
USPTO as well as through continuous use of the mark in commerce since
1979. See 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.”); see also U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that
a mark is registrable, by so issuing a registration, as indeed was the case
here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Respondent’s
<2005comdex.com>, <comdex2005.com>, <comdex2006.com>
and <comdex2007.com> domain names are confusingly similar to
Complainant’s COMDEX mark, as the domain names incorporate the mark completely
and merely add the numbers “2005,” “2006” or “2007.” The Panel finds that such additions are not enough to distinguish
Respondent’s domain names from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v.
Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the
suffixes "502" and "520" to the ICQ trademark does little
to reduce the potential for confusion); see also Omnitel Pronto Italia
S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the
contested <omnitel2000.com> domain name is confusingly similar to the
OMNITEL trademark).
Furthermore, the addition of the generic top-level domain “.com” is
insufficient to distinguish Respondent’s domain names from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See 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.”); see also
Daedong-USA, Inc. v. O’Bryan Implement
Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain
name, <kioti.com>, is identical to Complainant's KIOTI mark because
adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights or legitimate interests in the <2005comdex.com>,
<comdex2005.com>, <comdex2006.com> and <comdex2007.com>
domain names and Respondent, in not submitting a response, has failed to rebut
Complainant’s assertion. Thus, the
Panel may interpret Respondent’s failure to respond as evidence that Respondent
lacks rights and legitimate interests in the disputed domain names 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 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 have no legitimate
interest in the domain names). The
Panel will analyze whether Respondent could meet its burden of establishing
rights or legitimate interests for purposes of Policy ¶ 4(a)(ii).
Nothing in the
record indicates that Respondent is either commonly known by the disputed
domain names or authorized to register domain names featuring Complainant’s
COMDEX mark. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(c)(ii).
See 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); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
Furthermore,
Respondent is using the <2005comdex.com>, <comdex2005.com>,
<comdex2006.com> and <comdex2007.com> domain names,
which are confusingly similar to Complainant’s COMDEX mark, to operate a
website that features links to various third-party websites, including websites
operated by competitors of Complainant.
The Panel finds that such diversionary and competitive use of the
disputed domain names 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 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep.
26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>,
<24-hourfitness.com> and <24hoursfitness.com> domain names to
redirect Internet users to a website featuring advertisements and links to
Complainant’s competitors could not be considered a bona fide offering
of goods or services or a legitimate noncommercial or fair use); see also 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).”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar domain names to operate websites that feature
links to various third-party websites, through which Respondent presumably
earns click-through fees. The Panel
finds that Respondent is capitalizing on Internet user confusion and that such
diversionary use is evidence of bad faith registration and use under 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent).
Respondent
registered the <2005comdex.com>, <comdex2005.com>, <comdex2006.com>
and <comdex2007.com> domain names with actual or constructive
knowledge of Complainant’s mark due to Complainant’s registration of the COMDEX
mark with the USPTO. The Panel finds
that registration of a domain name that is confusingly similar to another’s
mark, despite actual or constructive knowledge of the mark holder’s superior
rights, is tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); 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.”).
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 <2005comdex.com>, <comdex2005.com>,
<comdex2006.com> and <comdex2007.com> domain names be
TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
September 7, 2005
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