Colibri Corporation v. ELRO c/o Elliot Goykhman
Claim Number: FA0601000637752
Complainant is Colibri Corporation (“Complainant”), represented by Michelle Brownlee, of Colibri Corporation, 100 Niantic Avenue, Providence, RI 02907, USA. Respondent is ELRO c/o Elliot Goykhman (“Respondent”), 244 Madison Avenue Suite 357, New York, NY 10016, USA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <dolanbullock.com>, registered with TLDS, LLC d/b/a SRSPlus.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2006.
On February 2, 2006, TLDS, LLC d/b/a SRSPlus confirmed by e-mail to the National Arbitration Forum that the <dolanbullock.com> domain name is registered with TLDS, LLC d/b/a SRSPlus and that Respondent is the current registrant of the name. TLDS, LLC d/b/a SRSPlus has verified that Respondent is bound by the TLDS, LLC d/b/a SRSPlus 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 February 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 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@dolanbullock.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <dolanbullock.com> domain name is identical to Complainant’s DOLAN BULLOCK mark.
2. Respondent does not have any rights or legitimate interests in the <dolanbullock.com> domain name.
3. Respondent registered and used the <dolanbullock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Colibri Corporation, and its predecessors in interest have been continuously and extensively selling men’s jewelry and watches under the DOLAN BULLOCK mark since 1939. Complainant has registered the DOLAN BULLOCK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,907,288 issued July 25, 1995; Reg. No. 2,044,186 issued March 11, 1997). Complainant also owns registrations for the mark in Russia (Reg. No. 268,030 issued March 23, 2003) and Canada (Reg. No. TMA619,161 issued September 13, 2004 ).
Respondent registered the <dolanbullock.com> domain name on September 22, 2004. Respondent’s domain name resolves to a website with the words “DOMAIN DOLANBULLOCK.COM IS AVAILABLE” printed in large letters and “Service provided by ELRO CORPORATION” in smaller letters. When Complainant’s counsel contacted Respondent about the disputed domain name, Respondent claimed that it had reserved the <dolanbullock.com> domain name on behalf of Lancaster Jewelry, a client.
Respondent stated that the client was willing to sell the disputed domain name to Complainant, but despite several attempts, Respondent failed to provide this client’s contact information.
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 DOLAN BULLOCK mark through registration of the mark with the USPTO. See Innomed Techs., 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.”); 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 <dolanbullock.com>
domain name is identical to Complainant’s DOLAN BULLOCK mark pursuant to Policy
¶ 4(a)(i), because it incorporates Complainant’s entire mark and merely adds a
generic top-level domain, “.com.” The
Panel concludes that generic top-level domains are irrelevant in a
determination of whether a domain name is identical to a complainant’s
mark. See 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); see
also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> is identical to
the complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
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 <dolanbullock.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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) (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”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <dolanbullock.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent has registered the domain name under the name
“ELRO c/o Elliot Goykhman” and there is no other evidence in the record
suggesting that Respondent is commonly known by the <dolanbullock.com> domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 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).
Moreover, Respondent is using the <dolanbullock.com> domain name, which is identical to Complainant’s DOLAN BULLOCK mark, to divert Internet users to its own commercial website, where it offers to sell the domain name. Use of the disputed domain name to misdirect consumers to Respondent’s own website for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to 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 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <dolanbullock.com> domain name, which is identical to Complainant’s DOLAN BULLOCK mark, to divert Internet users to its own website where it offers the domain name for sale. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill associated with the mark for commercial gain. The Panel finds that such use is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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)).
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 <dolanbullock.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Date: March 20, 2006
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