Cybertania, Inc v. Turvill, Consultants
Claim Number: FA0509000568919
Complainant is Cybertania, Inc (“Complainant”), represented by James W. Lyne, of The Offices of Anderson J. Ward, P.C., 8519 W. 191st Street, Suite 29, Mokena, IL 60448-8443. Respondent is Turvill, Consultants (“Respondent”), 265 Port Union Road, 15525, Scarborough, Ontario, M1C4Z7, CA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ultra-passwords.com> and <ultra-password.com>, registered with Moniker Online Services, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2005.
On October 3, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <ultra-passwords.com> and <ultra-password.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. 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 October 5, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@ultra-passwords.com and postmaster@ultra-password.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ultra-passwords.com> and <ultra-password.com> domain names are identical and confusingly similar, respectively, to Complainant’s ULTRAPASSWORDS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <ultra-passwords.com> and <ultra-password.com> domain names.
3. Respondent registered and used the <ultra-passwords.com> and <ultra-password.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cybertania, Inc, operates a popular adult entertainment website. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ULTRAPASSWORDS.COM mark (Reg. No. 2,741,422 issued July 29, 2003). Complainant has continuously operated its adult entertainment services website online since 1998 in connection with the ULTRAPASSWORDS.COM mark.
Respondent registered the <ultra-passwords.com> and <ultra-password.com> domain names on April 30, 2002. Respondent is using the disputed domain names to redirect Internet users to websites 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 that it currently has rights in
the ULTRAPASSWORDS.COM mark through registration of the mark with the USPTO and
through continuous use of the mark in commerce. Complainant’s rights in the ULTRAPASSWORDS.COM registered
trademark date back to its filing date, June 28, 2002. 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). Because the filing
date falls after Respondent’s April 30, 2002 registration date of the <ultra-passwords.com>
and <ultra-password.com> domain names, Complainant must
demonstrate that its rights in the ULTRAPASSWORDS.COM mark predate Respondent’s
registration of the disputed domain names.
In this instance, Complainant offers its trademark registration to
establish a “first use” date of December 1, 1998. Because Respondent has offered no evidence to dispute this
assertion, the Panel finds that Complainant has established common law rights
in the ULTRAPASSWORDS.COM mark dating back to 1998 from its use of the mark in
connection with an adult entertainment website. See Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”); see also SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist).
Respondent’s
<ultra-passwords.com> domain name is identical to
Complainant’s ULTRAPASSWORDS.COM
because the domain name incorporates Complainant’s mark in its entirety
and merely adds a hyphen to the mark.
Respondent’s <ultra-password.com> domain name is confusingly similar to
Complainant’s ULTRAPASSWORDS.COM
mark because the
domain name wholly incorporates Complainant’s mark and merely adds a hyphen and
omits an “s” from the mark. The Panel
finds that such minor alterations to Complainant’s registered mark do not negate
the identical and confusingly similar aspects of Respondent’s domain names
pursuant to Policy ¶ 4(a)(i). See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark"); see also Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)
(“[T]he addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see
also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov.
18, 2000) (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); see also State Farm
Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to the complainant’s STATE FARM mark).
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 <ultra-passwords.com> and <ultra-password.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 <ultra-passwords.com>
and <ultra-password.com> domain names to redirect Internet users to
websites that feature goods and services that compete with Complainant’s
business. Respondent’s use of domain
names that are identical and confusingly similar to Complainant’s
ULTRAPASSWORDS.COM mark to redirect Internet users interested in Complainant’s
products to websites that offer similar goods and services 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 evidence in the record suggesting that Respondent is commonly known by the <ultra-passwords.com> or <ultra-password.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <ultra-passwords.com> and <ultra-password.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 <ultra-passwords.com> and <ultra-password.com> domain names to redirect Internet users to websites that features 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)).
The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing websites. Because Respondent’s domain names are identical and confusingly similar to Complainant’s ULTRAPASSWORDS.COM mark, Internet users accessing Respondent’s domain names may become confused as to Complainant’s affiliation with the resulting websites. Thus, Respondent’s use of the <ultra-passwords.com> and <ultra-password.com> domain names constitutes 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ultra-passwords.com> and <ultra-password.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 15, 2005
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