United Service Organizations, Inc. v.
Joseph Walker
Claim
Number: FA0508000543463
Complainant is United Service Organizations, Inc. (“Complainant”),
represented by Keith A. Barritt, of Fish & Richardson P.C.,
1425 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is Joseph Walker (“Respondent”), PO Box 746, Franklin, GA 30217.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <usorome.com>, <usoparis.com>,
<usonaples.com>, and <usodubai.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 19, 2005.
On
August 18, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the <usorome.com>, <usoparis.com>,
<usonaples.com>, and <usodubai.com> domain names are
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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@usorome.com, postmaster@usoparis.com,
postmaster@usonaples.com, and postmaster@usodubai.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 16, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
James A. Craryas 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 <usorome.com>, <usoparis.com>,
<usonaples.com>, and <usodubai.com> domain names are
confusingly similar to Complainant’s USO mark.
2. Respondent does not have any rights or
legitimate interests in the <usorome.com>, <usoparis.com>,
<usonaples.com>, and <usodubai.com> domain names.
3. Respondent registered and used the <usorome.com>,
<usoparis.com>, <usonaples.com>, and <usodubai.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
United Service Organizations, Inc., is a congressionally chartered non-profit
private organization that provides a wide range of services to members of the
United States armed forces. For over 60
years, Complainant has been providing comfort and assistance to military
personnel and their families. One
service that Complainant provides is support services to United States armed
forces personnel in the continental United States and overseas, namely providing
travellers’ information, aid and tours to military personnel and their
families.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the USO mark (i.e., Reg. No. 703,682
issued August 30, 1960).
Respondent,
Joseph Walker, registered the <usorome.com>, <usoparis.com>,
and <usodubai.com> domain names on October 26, 2004, and the <usonaples.com>
domain name on November 7, 2004.
Respondent is using the disputed domain names to redirect Internet users
to its commercial websites featuring travel services that compete with
Complainant’s travel services.
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 USO mark through registration of the mark with the USPTO. 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 disputed
domain names are confusingly
similar to Complainant’s USO mark because Respondent’s domain names incorporate
Complainant’s mark in its entirety, add geographic identifiers and the generic
top-level domain “.com” to the mark.
The Panel finds that such minor alterations to Complainant’s registered
mark do not negate the confusingly similar aspects of Respondent’s domain names
pursuant to Policy ¶ 4(a)(i). See
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding
that the respondent’s domain name <net2phone-europe.com> is confusingly
similar to the complainant’s mark because “the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar"); see also VeriSign, Inc.
v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity
between the complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word
“India” to the complainant’s mark); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
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 <usorome.com>,
<usoparis.com>, <usonaples.com>, and <usodubai.com>
domain names. 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
names. 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 <usorome.com>, <usoparis.com>, <usonaples.com>,
and <usodubai.com> domain names to redirect Internet users to its
commercial websites featuring travel services that compete with Complainant’s
travel services. Respondent’s use
of domain names that are confusingly
similar to Complainant’s USO mark to redirect Internet users interested in
Complainant’s services to a website that offers similar services in competition
with Complainant’s services 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 evidence in the record
suggesting that Respondent is commonly known by the <usorome.com>,
<usoparis.com>, <usonaples.com>, or <usodubai.com>
domain name. Thus, Respondent has not established rights
or legitimate interests in the <usorome.com>, <usoparis.com>,
<usonaples.com>, and <usodubai.com> 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
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 <usorome.com>, <usoparis.com>, <usonaples.com>,
and <usodubai.com> domain names, which are confusingly similar to
Complainant’s USO mark, to redirect Internet users to Respondent’s commercial
websites that feature services that compete with Complainant’s services. 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 registered the <usorome.com>, <usoparis.com>,
<usonaples.com>, and <usodubai.com> domain names with
constructive knowledge of Complainant’s rights in the USO mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel finds that Respondent
registered the <usorome.com>, <usoparis.com>, <usonaples.com>,
and <usodubai.com> domain names with actual knowledge of
Complainant’s rights in the mark because of the obvious link between
Complainant and the services advertised at Respondent’s websites. Thus, Respondent registered and used the <usorome.com>,
<usoparis.com>, <usonaples.com>, and <usodubai.com>
domain names in bad faith pursuant to Policy ¶ 4(a)(iii). 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 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”).
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 <usorome.com>, <usoparis.com>, <usonaples.com>,
and <usodubai.com> domain names be TRANSFERRED from
Respondent to Complainant.
James A. Crary, Panelist
Dated:
September 30, 2005
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