Blackwood Assets, Inc. v. Domain Active
Claim Number: FA0601000619653
Complainant is Blackwood Assets, Inc. (“Complainant”), represented by Dennis P. McCooe, of Blank Rome LLP, One Logan Square, Philadelphia, PA 19103. Respondent is Domain Active (“Respondent”), GPO Box 262, Clayfield, QLD 4011, Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <acmoores.com>, registered with Fabulous.com Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 6, 2006.
On January 9, 2006, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <acmoores.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 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@acmoores.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 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <acmoores.com> domain name is confusingly similar to Complainant’s A.C. MOORE mark.
2. Respondent does not have any rights or legitimate interests in the <acmoores.com> domain name.
3. Respondent registered and used the <acmoores.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blackwood Assets, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the A.C. MOORE mark. Complainant first registered the A.C. MOORE mark with the USPTO on December 15, 1998 (Reg. No. 2,210,537).
Complainant licenses the A.C. MOORE mark, as well as the related A.C. MOORE mark, on an exclusive basis to its affiliate, A.C. Moore, Inc. Since 1985, A.C. Moore, Inc. has utilized these marks in the operation of over 100 retail stores that sell arts, crafts, and floral supplies. Under the exclusive license with Complainant, A.C. Moore, Inc. has registered and operated a website at the <acmoore.com> domain name since 1996.
Respondent registered the <acmoores.com> domain name on June 22, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features links to websites offering arts and craft products and services that directly compete 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.
The Panel finds that Complainant’s registration of its A.C. MOORE mark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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.").
Respondent’s <acmoores.com> domain name is
confusingly similar to Complainant’s A.C. MOORE mark, as Respondent’s domain
name incorporates Complainant’s mark and adds the letter “s” and the generic
top-level domain “.com.” See Nat’l
Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also
Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of the complainant’s mark,
‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of
the remaining identical mark. The domain name <creampies.com> is similar
in sound, appearance, and connotation”); see also Surface Prot.
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the
domain name <mannbrothers.com> confusingly similar to the complainant’s
MANN BROTHERS mark “so as to likely confuse Internet users who may believe they
are doing business with Complainant or with an entity whose services are
endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying
the confusing similarity requirement”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant possesses the initial burden to prove that Respondent has no rights or legitimate interests in the disputed domain name. 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)."). However, Respondent has failed to respond to the Complaint. Consequently, having found that Complainant has presented a prima facie case, the Panel will examine the evidence on record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
The evidence on record suggests that Respondent is using the
<acmoores.com> domain name to operate a website featuring links to
third party websites offering goods that directly compete with
Complainant. Respondent has not
established use of, or any demonstrable preparations to use, the disputed
domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan.
11, 2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see
also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
Moreover, the confusing similarity
between Respondent’s <acmoores.com> domain name and
Complainant’s mark suggests that Respondent uses the disputed
domain name to divert Internet consumers looking for Complainant’s
website. Consequently, the evidence on
record suggests that Respondent is not making a
legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers, under Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, there is no evidence in the record to suggest that Respondent is commonly known by the <acmoores.com> domain name. Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s mark. Furthermore, Respondent’s WHOIS information indicates that he is not commonly known by the disputed domain name. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
By using the disputed domain name to operate a website
providing links to third party websites offering similar goods to those of
Complainant, Respondent demonstrates an intent to disrupt the business of
Complainant. This is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc.
v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
Additionally, Respondent
is using the <acmoores.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iv), because Respondent
is using Complainant’s A.C. MOORE mark to attract Internet users to third party
websites that offer products similar to Complainant. This is evidence that Respondent is attempting to profit by creating
a likelihood of confusion between Complainant’s mark and Respondent’s
website. See Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged
in bad faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant); see also
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
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 <acmoores.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 24, 2006
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