Allied Marketing Group, Inc. v. 365
Hosting Ltd. and Stephen McCarron
Claim
Number: FA0508000542034
Complainant is Allied Marketing Group, Inc. (“Complainant”),
represented by Russell N. Rippamonti of Fish & Richardson P.C.,
1717 Main Street, Suite 5000, Dallas, TX 75201. Respondent is 365 Hosting
Ltd. and Stephen McCarron (“Respondent”), Unit 5, Beckett Way, Parkwest
Business Park, Nangor Road, Dublin 12, IE.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanhomeshopper.com>, registered with
Enom, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 18, 2005.
On
August 17, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the <americanhomeshopper.com> domain name is registered
with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound
by the Enom, 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 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 12, 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@americanhomeshopper.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
James A. Carmody, Esq., 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 <americanhomeshopper.com>
domain name is identical to Complainant’s AMERICAN HOME SHOPPER mark.
2. Respondent does not have any rights or
legitimate interests in the <americanhomeshopper.com> domain name.
3. Respondent registered and used the <americanhomeshopper.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Allied Marketing Group, Inc., is in the
business of providing mail order catalog services for products such as
housewares, home office equipment, jewelry, luggage, tools, televisions, home
stereo equipment and many other items.
Complainant owns a registration for the AMERICAN HOME SHOPPER mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,342,319
issued April 18, 2000). Complainant has
used the mark continuously in commerce since at least 1990.
Additionally, Complainant has spent significant money and resources to
develop and promote its AMERICAN HOME SHOPPER mark in connection with its mail
order catalog services.
Respondent registered the <americanhomeshopper.com> domain name on July 21, 2004. Respondent is using the disputed domain name
to operate a website that offers various adult-oriented items for sale and
displays links to numerous third-party business offering similar 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
asserts rights in the AMERICAN HOME SHOPPER mark based on its registration of
the mark with the USPTO. It is well
established under the Policy that a complainant’s registration of a mark with a
federal authority establishes a prima facie case of the complainant’s
rights. 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.”); see
also 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.”).
The <americanhomeshopper.com>
domain name differs from Complainant’s AMERICAN HOME SHOPPER mark only with the
addition of the generic top-level domain (“gTLD”) “.com.” Adding a gTLD is irrelevant in determining
similarity under the Policy and, therefore, does not function as a
distinguishing feature. The Panel finds
that the disputed domain name is identical to Complainant’s mark under Policy ¶
4(a)(i). See Blue Sky
Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under the
Policy, the complainant has the initial burden of proving that the respondent
lacks rights and legitimate interests in the disputed domain name. Once the complainant has made a prima
facie case by asserting that the respondent does not have rights or
legitimate interests, the burden shifts to the respondent to prove that it does
have rights or legitimate interests. In
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001), the panel held:
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”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now conduct an analysis of whether Respondent has met its
burden to establish rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the AMERICAN HOME SHOPPER mark
or the <americanhomeshopper.com> domain name and that Complainant
has not licensed or otherwise permitted Respondent to use Complainant’s mark or
any variation thereof. Since the Panel
has not received a response from Respondent, the Panel is left with no evidence
to rebut Complainant’s contentions.
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name under 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 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).
Furthermore,
Complainant contends that Respondent is using the <americanhomeshopper.com>
domain name in association with a commercial website that offers a large range
of adult-oriented items for sale.
Respondent’s use of a domain name identical to Complainant’s registered
mark to divert Internet users to Respondent’s commercial website does not
constitute a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Geoffrey,
Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that
the respondent had no rights or legitimate interests in a domain name that it
used to redirect Internet users to an Internet directory website that featured
numerous pop-up advertisements for commercial goods and sexually explicit
websites); see also Am. Online,
Inc. v. Tencent Communicatins Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that use of the complainant’s mark “as a portal to suck surfers
into a site sponsored by [the respondent] hardly seems legitimate”); 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).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
The <americanhomeshopper.com>
domain name resolves to a website that offers adult-oriented products and displays
links to third-party websites offering these products. Presumably, Respondent profits from the
sales of the products and from referral fees to the third-party websites. Respondent’s use of Complainant’s AMERICAN
HOME SHOPPER mark in the disputed domain name creates a likelihood of confusion
and suggests an attempt to attract Internet users to Respondent’s website for
Respondent’s commercial gain. The Panel
finds that this is evidence of Respondent’s bad faith registration and use
pursuant to 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 State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website).
Complainant’s
registration of its mark with the USPTO is sufficient to confer upon Respondent
constructive notice of Complainant’s rights in the AMERICAN HOME SHOPPER mark
included in the domain name. Thus,
Respondent’s constructive notice coupled with Respondent’s registration of a
domain name that includes Complainant’s registered AMERICAN HOME SHOPPER mark
in its entirety suggest that Respondent knew of Complainant’s rights in the
mark when it registered the disputed domain name. Respondent’s registration of the <americanhomeshopper.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the mark is evidence of 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) ( “[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 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.”).
The Panel finds
that Complainant has 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 <americanhomeshopper.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
September 28, 2005
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