Tandy Leather Company, Inc. v. Unasi Inc.
Claim Number: FA0512000611774
Complainant is Tandy Leather Company, Inc. (“Complainant”), represented by Stephen D. Lawrence, of Loe, Warren, Rosenfield, Kaitcer, Hibbs & Windsor, P.C., P.O. Box 100609, Fort Worth, TX 76185-0609. Respondent is Unasi Inc. (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tandyleatherco.com>, registered with Domaindoorman, Llc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On January 3, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <tandyleatherco.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 January 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2006 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@tandyleatherco.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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 <tandyleatherco.com> domain name is confusingly similar to Complainant’s TANDY LEATHER COMPANY mark.
2. Respondent does not have any rights or legitimate interests in the <tandyleatherco.com> domain name.
3. Respondent registered and used the <tandyleatherco.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tandy Leather Company, Inc., is a retail leathercraft business, which currently operates forty-two retail stores in the United States and Canada and has widely used its TANDY LEATHER COMPANY mark since 1948. Complainant’s TANDY LEATHER COMPANY mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,023,963, issued October 28, 1975).
Respondent registered the disputed domain name, <tandyleatherco.com>, on November 28, 2005. Internet users who access this domain name are redirected to a generic search-engine website which features links to advertisers of other goods and services, both unrelated to and in 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 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.
By registering the TANDY LEATHER COMPANY mark with the USPTO, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <tandyleatherco.com> domain name incorporates Complainant’s TANDY LEATHER COMPANY mark, and only differs from Complainant’s mark in that the spaces are removed and the word “company” is shortened to its common abbreviation, “co.” Neither the mere removal of spaces from Complainant’s mark nor the abbreviation of a term in Complainant’s mark negate the fact that Respondent’s <tandyleatherco.com> domain name is confusingly similar to Complainant’s TANDY LEATHER COMPANY mark pursuant to Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it has rights or legitimate interests in the <tandyleatherco.com> domain name once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in it. See 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).”); 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”). Because Complainant has presented a prima facie case, and Respondent has failed to respond to the Complaint, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent uses the <tandyleatherco.com>
domain name, which is confusingly similar to Complainant’s TANDY LEATHER
COMPANY mark, to redirect Internet users to a generic search-engine
website. This website features links to
products and services both unrelated to and in competition with Complainant’s
products, and Respondent presumably receives click-through fees in exchange for
diverting Internet users to these websites.
Such use of the <tandyleatherco.com>
domain name is not in connection with 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
Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also
U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum
May 6, 2003) (holding that the
respondent’s use of the complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services).
The WHOIS database entry for <tandyleatherco.com> shows that Respondent registered this domain name under the name “Unasi Inc.”, and there is no evidence that Respondent has ever been commonly known as <tandyleatherco.com>. Complainant states that there is no affiliation between Complainant and Respondent. Thus, the Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <tandyleatherco.com> domain name, which is confusingly similar to Complainant’s TANDY LEATHER COMPANY mark, redirects Internet users to a generic search-engine website. This site features links to advertisers of other products and services, including products offered by Complainant’s competitors. The Panel infers that Respondent benefits from misleading Internet users in this fashion by receiving click-through fees in exchange for diverting Internet users to websites unaffiliated with Complainant. This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
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 <tandyleatherco.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 17,2006
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