national arbitration forum

 

DECISION

 

Rose Displays, Ltd. v domain, support d/b/a Virtual Sky

Claim Number:  FA0508000537465

 

PARTIES

 

Complainant is Rose Displays, Ltd. (“Complainant”), is represented by John Oleske, 437 Madison Avenue, New York, NY 10022.  Respondent is domain, support d/b/a Virtual Sky (“Respondent”), PO Box 20543, SMB, George Town, Grand Cayman 32084, KY.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <rosedisplay.com>, registered with Moniker Online Services, Inc.

 

PANEL

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2005.

 

On August 11, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <rosedisplay.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 24, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 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@rosedisplay.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 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <rosedisplay.com> domain name is confusingly similar to Complainant’s ROSE DISPLAYS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <rosedisplay.com> domain name.

 

3.      Respondent registered and used the <rosedisplay.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Rose Displays, Ltd., has been a leading developer in high quality, innovative signware solutions for the past twenty-five years. 

 

Since 1980, Complainant has extensively marketed and promoted its ROSE DISPLAYS mark.  Complainant has spent substantial sums of money on advertising and promoting its services and products under the ROSE DISPLAYS mark, by way of thousands of printed catalogs and supporting brochures, a minimum of ten full page advertisement in at least two premier trade publications annually for the past eight years, a minimum of five direct mail promotional mailings each year over the past five years and participation in at least six trade show exhibitions per year over the past seven years.

 

Due to Complainant’s extensive advertising promotion and use of the ROSE DISPLAYS mark in the United States, Complainant has built up significant customer loyalty and goodwill over the past twenty-five years.

 

Complainant has owned the <rosedisplays.com> domain name since 1996, to serve the needs of its customers.

 

Respondent registered the <rosedisplay.com> domain name December 12, 2004.  Respondent’s domain name resolves to a website that features links to third-party websites, some of which directly compete with Complainant’s business. 

 

DISCUSSION

 

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.

 

 

Identical and/or Confusingly Similar

 

The Panel finds that under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark and that common law rights are sufficient.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also 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”).

 

The Panel finds that Complainant has established common law rights in the ROSE DISPLAYS mark through its longstanding and continuous use of the mark in commerce for over twenty-five years and Complainant’s recognition in the signage solutions industry under that mark.  The Panel concludes that the mark has acquired secondary meaning and is thus entitled to common law protection.  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 Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”). 

 

Moreover, Complainant alleges that Respondent’s <rosedisplay.com> domain name is confusingly similar to Complainant’s ROSE DISPLAYS mark pursuant to Policy ¶ 4(a)(i), as the domain name incorporates the mark in its entirety and adds the letter “s” Complainant’s mark.  The Panel finds that such an addition is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have rights or legitimate interests in the <rosedisplay.com> domain name.  When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests.  Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); 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 rights or legitimate interests do exist); see also 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).

 

Moreover, Respondent is not commonly known by the <rosedisplay.com> domain name.  Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed 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 interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Furthermore, Respondent is using the <rosedisplay.com> domain name to operate a website featuring commercial links to third-party websites.  The Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s diversionary use of complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered the <rosedisplay.com> domain name to disrupt Complainant’s business, because Respondent’s domain name redirects Internet users to a variety of third-party websites, some of which offer services that compete directly wih those offered by Complainant.  The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to its commercial website.  Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), as Respondent is using the <rosedisplay.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.  See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <rosedisplay.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Louis E. Condon, Panelist

Dated:  October 4, 2005