East Kentucky Network, LLC v. Forum LLC
Claim
Number: FA0508000528216
Complainant is East Kentucky Network, LLC (“Complainant”),
represented by Jennifer L. Kovalcik, of Stites & Harbison, PLLC,
400 West Market Street, Suite 1800, Louisville, KY 40202. Respondent is Forum LLC (“Respondent”), PO Box 2331, Roseau, Roseau 00152, DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <appalachianwireless.com>, registered with
Fabulous.com Pty Ltd.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 1, 2005.
On
August 4, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the <appalachianwireless.com> domain name
is registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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
August 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 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@appalachianwireless.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 6, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Paul A. Dorf (Ret.) 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 <appalachianwireless.com>
domain name is identical to Complainant’s APPALACHIAN WIRELESS mark.
2. Respondent does not have any rights or
legitimate interests in the <appalachianwireless.com> domain name.
3. Respondent registered and used the <appalachianwireless.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
East Kentucky Network, LLC, holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the APPALACHIAN WIRELESS mark
(Reg. No. 2,332,055 issued March 21, 2000) in connection with its cellular
telephone communications services.
Respondent
registered the <appalachianwireless.com> domain name on June 4,
2002. Respondent is using the disputed
domain name to redirect Internet users to Respondent’s commercial website
offering goods and services that compete with 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. 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 APPALACHIAN WIRELESS mark through registration of the
mark with the USPTO and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., 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.”).
Respondent’s <appalachianwireless.com>
domain name is identical to Complainant’s APPALACHIAN WIRELESS mark because the
domain name features Complainant’s mark in its entirety and merely adds the
generic top-level domain “.com” to the mark.
The Panel finds that such a minor alteration to Complainant’s mark is
insufficient to negate the identical aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc.,
AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the
conjunctive rather than disjunctive sense in holding that “mere identicality of
a domain name with a registered trademark is sufficient to meet the first
element [of the Policy], even if there is no likelihood of confusion
whatsoever”); see also Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc.,
202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For
consumers to buy things or gather information on the Internet, they need an
easy way to find particular companies or brand names. The most common method of
locating an unknown domain name is simply to type in the company name or logo
with the suffix .com"); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <appalachianwireless.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove 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 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 respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on 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 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 interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <appalachianwireless.com> domain name to redirect
Internet users to Respondent’s commercial website featuring goods and services
that compete with Complainant’s business.
Respondent’s use of a domain name that is identical to Complainant’s
APPALACHIAN WIRELESS mark to redirect Internet users interested in
Complainant’s products to a website that offers similar goods in competition
with Complainant’s business is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Or. State
Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to the Complainant's to
sell competing goods.”).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <appalachianwireless.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <appalachianwireless.com>
domain name 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 interests 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); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent 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 <appalachianwireless.com> domain name, which is
identical to Complainant’s APPALACHIAN WIRELESS mark, to redirect Internet
users to Respondent’s commercial website featuring goods and services that
compete with Complainant’s business.
The Panel finds that such use constitutes disruption and is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent diverted business from the complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
Respondent’s registration of a domain name identical to Complainant’s
registered mark, as well as the content of Respondent’s website, suggests that
Respondent registered the disputed domain name with actual knowledge of
Complainant’s rights in the APPALACHIAN WIRELESS mark. Furthermore, Respondent is deemed to have
constructive knowledge of Complainant’s mark due to Complainant’s registration
with the USPTO. Thus, the Panel finds
that Respondent registered and used the domain name in bad faith because
Respondent chose the <appalachianwireless.com> domain name based
on the distinctive and well-known qualities of Complainant’s mark. 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 Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
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 <appalachianwireless.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
September 22, 2005
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