A Retired Collection, LLC v. Virtual Sky
c/o domain support
Claim
Number: FA0508000535461
Complainant, A Retired Collection, LLC (“Complainant”),
is represented by Antonio Borrelli of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY, 10036-6799. Respondent is Virtual Sky c/o domain support (“Respondent”), PO Box
20543 SMB, George Town, Grand Cayman, 32084, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <retiredcollection.com>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically August
8, 2005; the National Arbitration Forum received a hard copy of the Complaint August
10, 2005.
On
August 13, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the <retiredcollection.com> domain
name is registered with Moniker Online Services, Inc. and that Respondent is
the current registrant of the name. Moniker Online Services, Inc. verified that
Respondent is bound by the Moniker Online Services, Inc. registration agreement
and thereby has 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 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 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@retiredcollection.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 13, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <retiredcollection.com>, is confusingly similar to
Complainant’s A RETIRED COLLECTION mark.
2. Respondent has no rights to or legitimate
interests in the <retiredcollection.com> domain name.
3. Respondent registered and used the <retiredcollection.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, A
Retired Collection, LLC, is a reseller in the secondary market of discontinued
porcelain figurines. Complainant sells
these figurines through its website at the <aretiredcollection.com>
domain name. Complainant has used the A
RETIRED COLLECTION mark since November 1, 1992. Complainant holds a registration for its mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,728,694 issued June
24, 2003). Complainant extensively
advertised and promoted its online retail store services in connection with its
mark.
Respondent
registered the <retiredcollection.com> domain name on March 3,
2004. The domain name resolves to a
website featuring links to websites that offer collectable figurines, antiques,
and other goods, some of which are in direct competition with 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 as the Panel 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 Complainant to 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 of its mark with the USPTO is sufficient to establish the
complainant’s rights in that mark. In Innomed Techs., Inc. v. DRP Services, FA 221171 (Nat. Arb. Forum Feb. 18, 2004), for example, a
panel held that, “Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”
Id. Likewise, in Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003), a panel held, “Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”
Id. Thus, the Panel
concludes that Complainant’s registration of it’s A RETIRED COLLECTION mark
with the USPTO is sufficient to establish Complainant’s rights in the mark.
Complainant
argues that Respondent’s domain name is confusingly similar to Complainant’s
mark, as the <retiredcollection.com> domain name merely deletes
the letter “a” from Complainant’s A RETIRED COLLECTION mark. The Panel holds that the deletion of a
single letter is insufficient to distinguish Respondent’s domain name from
Complainant’s mark. See Reuters Ltd.
v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); 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).
Consequently,
the Panel concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant
established with extrinsic proof in this proceeding that it has rights to and
legitimate interest in the mark contained within the disputed domain name. Complainant asserts that Respondent has no
such rights or legitimate interests in the disputed domain name. The Panel holds that Complainant’s assertion
establishes a prima facie case and shifts the burden to Respondent. To meet its burden, Respondent must provide
the Panel with evidence that it does have rights or legitimate interests in the
disputed domain name. 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 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).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant also
asserts that Respondent is not commonly known by the disputed domain name. In fact, Respondent’s WHOIS information
indicates that Respondent is known as “Virtual Sky.” Because Respondent did not provide the Panel with a response, the
Panel accepts Complainant’s allegation that Respondent is not commonly known by
the disputed domain name as true. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). Because
Respondent did not provide any evidence to prove that it is commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii), the Panel infers that
it does not have rights or legitimate interests in the <retiredcollection.com>
domain name under Policy ¶ 4(a)(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).
Additionally,
Complainant argues that Respondent is using the disputed domain name to divert
Internet users looking for Complainant’s website to Respondent’s website that
features links to businesses that compete with Complainant. The Panel infers from the evidence provided
by Complainant that Respondent commercially benefits from these links whenever
Internet users click on them. The Panel
finds that such diversionary use 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
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 MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
Accordingly, the
Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is using the disputed domain name to divert Internet
users to websites that features links to goods and services similar to those
that Complainant provides and to profit from diverting such Internet users to
various websites. The Panel holds that
Respondent is creating a likelihood of confusion for its own commercial
gain. Thus, the Panel concludes that
such use is evidence of bad faith use and registration under 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 MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent
registered a domain name confusingly similar to the complainant’s mark and the
domain name was used to host a commercial website that offered similar services
offered by the complainant under its mark).
Moreover,
Complainant argues that Respondent had actual knowledge of Complainant’s rights
in the mark due to the obvious link between Complainant’s business and the
content of Respodnent’s website.
Registration of a domain name with actual knowledge of Complainant’s
rights is tantamount to 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 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 <retiredcollection.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 27, 2005
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