Garrett Wade Co., Inc. v. Registrant (187640)
Claim Number: FA0602000642123
Complainant is Garrett Wade Co., Inc. (“Complainant”), represented by James Rosenfeld, of Davis Wright Tremaine LLP, 1633 Broadway, New York, NY 10019. Respondent is Registrant (187640) (“Respondent”), P.O. Box No. 71826, KCPO, Hong Kong 852, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <garretwade.com>, registered with Onlinenic, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 10, 2006.
On February 12, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <garretwade.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 February 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@garretwade.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 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a distributor of woodworking tools, shop tools, and related products.
Complainant has operated its business under the GARRETT WADE mark continuously for approximately thirty years, and conducts its business through catalog sales, its retail store and its website located at the <garrettwade.com> domain name.
Complainant is very well known in its industry, and the company annually spends hundreds of thousands of dollars to promote its name and reputation.
Respondent registered the <garretwade.com> domain name on November 29, 2001.
Internet users who access this domain name are taken to a website featuring links to various other websites selling products similar to those offered by Complainant.
One link on this website, entitled “Garretwade Catalog” and featured under the heading “sponsored links,” directs Internet users to Complainant’s website.
Respondent’s use of Complainant’s mark in connection with the disputed domain name is unauthorized.
Respondent’s <garretwade.com> domain name is confusingly similar to Complainant’s GARRETT WADE mark.
Respondent does not have any rights or legitimate interests in the <garretwade.com> domain name.
Respondent registered and uses the <garretwade.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
ii. the domain name has been registered and is being used in bad faith.
From the facts alleged by Complainant, none of which is disputed by Respondent, the Panel is entitled to and does conclude that, based on its use of the GARRETT WADE trademark in connection with its business, the mark has acquired sufficient secondary meaning to establish Complainant’s common law rights in the mark. Complainant has operated under the GARRETT WADE mark for approximately thirty years in connection with its retail operations. Complainant’s use of the GARRETT WADE mark in the circumstances alleged is sufficient to establish common law rights in the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that a complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <garretwade.com> domain name is confusingly similar to Complainant’s GARRETT WADE mark in that it merely removes one letter and the space between the terms. Because spaces are not allowed in domain names, the removal of the space between the terms in Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. Likewise, the removal of a single letter from Complainant’s mark does not distinguish Respondent’s domain name from the mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names....”); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to a complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
Moreover, the addition of “.com” to Complainant’s mark is irrelevant to the analysis of whether the disputed domain name is confusingly similar to the mark. Adding a generic top-level domain suffix such as “.com” to Complainant’s mark does not adequately distinguish Respondent’s domain name from the mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
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 Respondent to prove that it does have such rights or legitimate interests under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that a 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”).
Upon examination, the Panel finds that Respondent’s <garretwade.com> domain name is confusingly similar to Complainant’s GARRETT WADE mark. Internet users who access this domain name are directed to a website featuring links to various other websites selling products similar to those offered by Complainant. These links include one labeled “Garretwade Catalog”, which directs Internet users to Complainant’s own website and thus risks confusing Internet users about the relationship between Respondent’s website and Complainant.
The Panel infers that Respondent receives payment in
exchange for directing Internet users to these websites. 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat.
Arb. Forum June 12, 2003) (finding that a 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); see also Prudential
Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov.
15, 2001) (finding no rights or legitimate interests in the disputed domain
name where a respondent was using a complainant’s mark to redirect Internet
users to a website offering credit card services unrelated to such services
legitimately offered under the complainant’s mark).
There is no evidence of record showing that Respondent is commonly known by the <garretwade.com> domain name, and the WHOIS database contains no information implying that Respondent is commonly known by the disputed domain name. Furthermore, Complainant asserts, without contradiction from Respondent, that Respondent’s registration and use of Complainant’s mark in connection with the disputed domain name is unauthorized. Thus, Respondent has not established rights or legitimate interests in the <garretwade.com> domain name pursuant to 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail."
For all of these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts, and Respondent does not deny, that
Respondent uses the domain name <garretwade.com> to present
Internet users with links to products offered by Complainant’s
competitors. It is readily inferrable
that Respondent receives click-through fees in return for directing Internet
users to these websites. Such use of
the disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See 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.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Further evidence of Respondent’s bad faith is Respondent’s
removal of a letter from Complainant’s GARRETT WADE mark in a clear attempt to
capitalize on common typographical errors, which may confuse Internet users
about the relationship between Complainant and the content of Respondent’s
website. Use of a typosquatted version
of Complainant’s mark is independent evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Sports Auth. Mich., Inc. v. Internet
Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting
Internet users attempting to reach a complainant’s website in order to gain a
profit off of a complainant is one example of bad faith use and registration
under the Policy.”); see also Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is
the intentional misspelling of words with [the] intent to intercept and siphon
off traffic from its intended destination, by preying on Internauts who make
common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
Thus the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <garretwade.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 23, 2006
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