Grant Lloyd Berry, Inc. v. Virtual Sky c/o Domain Support
Claim Number: FA0512000616661
Complainant is Grant Lloyd Berry, Inc. (“Complainant”), represented by Lawrence D. Mandel, of Mandel & Peslak, LLC, 80 Scenic Drive, Suite 5, Freehold, NJ 07728. Respondent is Virtual Sky c/o Domain Support (“Respondent”), PO Box 20543 SMB, George Town, Grand Cayman 32804, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stylistyle.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, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 3, 2006.
On January 4, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <stylistyle.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 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@stylistyle.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 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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 <stylistyle.com> domain name is confusingly similar to Complainant’s STYLI-STYLE mark.
2. Respondent does not have any rights or legitimate interests in the <stylistyle.com> domain name.
3. Respondent registered and used the <stylistyle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Grant Lloyd Berry, Inc., is a successful cosmetics manufacturing business founded in 2000. Complainant’s STYLI-STYLE mark is used in connection with a line of cosmetic products offered for sale by Complainant, and Complainant’s mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,654,829, issued November 26, 2002).
Respondent registered the disputed domain name, <stylistyle.com>, on July 14, 2003. 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 not related to Complainant and also features pop-up advertisements. Some of the links on this website direct Internet users to products offered by Complainant’s competitors, and some links contain the names of specific products offered by 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.
Complainant, by registering the STYLI-STYLE mark with the
USPTO, has established rights in this mark pursuant to Policy ¶ 4(a)(i). See U.S. Office
of Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that
a mark is registrable, by so issuing a registration, as indeed was the case
here, an ICANN panel is not empowered to nor should it disturb that
determination.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s domain name <stylistyle.com> is
nearly identical to Complainant’s STYLI-STYLE mark, with the only difference
being the removal of the hyphen.
Therefore, Respondent’s domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO
May 9, 2000) (finding that the “addition of a hyphen to the registered mark is
an insubstantial change. Both the mark and the domain name would be pronounced
in the identical fashion, by eliminating the hyphen"); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000)
(holding that the domain name <cspan.net>, which omitted the hyphen from
the trademark spelling, C-SPAN, is confusingly similar to the complainant's
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to prove that it does have rights or legitimate interests in it. However, Respondent has failed to respond to the Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).”). The Panel finds that Complainant has presented a prima facie case, and will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent uses a domain name that is confusingly similar to
Complainant’s mark to redirect Internet users to a generic search-engine
website, which features pop-up advertisements and links to products or services
unrelated to Complainant, presumably in exchange for payment. Such use 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 Wells Fargo & Co. v. Party Night
Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of
Complainant’s WELLS FARGO mark to divert Internet users to websites featuring
pop-up advertisements” was not a bona fide offering of goods or
services); see also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
There is no evidence on record that Respondent is in any way affiliated with Complainant or that Respondent has ever been commonly known by the disputed domain name. The WHOIS database entry for <stylistyle.com> contains no information implying that Respondent is commonly known by this name. The Panel infers that Respondent has no rights or legitimate interests in this name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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.
The Panel assumes that Respondent receives click-through fees in exchange for diverting Internet users to both competing and unrelated websites, as well as additional revenue from pop-up advertisements. Because Respondent’s domain name is confusingly similar to Complainant’s STYLI-STYLE mark, and because links on Respondent’s website include the specific names of products offered by Complainant, Internet users may mistakenly believe that the resulting website is affiliated with Complainant. Use of the disputed domain name in this fashion 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 <stylistyle.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: February 16, 2006
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