San Mar Corporation v. Gary Roth
Claim Number: FA0602000651022
Complainant is San Mar Corporation (“Complainant”), represented by Parna A. Mehrbani, of Lane Powell PC, 601 SW Second Ave., Suite 2100, Portland, OR 97204. Respondent is Gary Roth (“Respondent”), 4120 E. Baltimore Ave., Las Vegas, NV 89104.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <companycausals.com>, registered with Go Daddy Software, Inc.
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 February 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2006.
On February 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <companycausals.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 21, 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@companycausals.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 28, 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 <companycausals.com> domain name is confusingly similar to Complainant’s COMPANYCASUALS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <companycausals.com> domain name.
3. Respondent registered and used the <companycausals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, San Mar Corporation, operates a website under the <companycasuals.com> domain name. Complainant uses its website to offer a catalog of apparel and accessories for sale. Complainant has used the COMPANYCASUALS.COM mark continuously in connection with its business since March 3, 2000.
Respondent registered the <companycausals.com> domain name on June 16, 2005. Internet users who access this domain name are directed to a generic search-engine website, which features links to products 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.
Complainant asserts that the COMPANYCASUALS.COM mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant has operated under the COMPANYCASUALS.COM mark since March 3, 2000 in connection with its online apparel sales, and Complainant’s use of the mark has been continuous and ongoing since that date. Complainant’s use of the COMPANYCASUALS.COM mark in this fashion 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 the 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 <companycausals.com> domain name is confusingly similar to Complainant’s COMPANYCASUALS.COM mark in that it incorporates the mark with two of the letters transposed. Merely transposing two letters in Complainant’s mark does not adequately distinguish Respondent’s domain name from the mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 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 Respondent to prove that it does have rights or legitimate interests. The Panel finds that Complainant has made a prima facie case, and the burden shifts to Respondent as a result. Therefore, the Panel will examine the evidence to determine if Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent uses the <companycausals.com> domain
name, which is confusingly similar to Complainant’s mark, to direct Internet
users to a generic search-engine website featuring links to other
websites. The Panel presumes that
Respondent earns click-through fees in exchange for diverting Internet users to
these other websites. Therefore, Respondent
is taking advantage of the confusing similarity between its domain name and
Complainant’s mark for its own financial gain.
Such use of the disputed 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 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 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 that Respondent has ever been commonly known by the <companycausals.com> domain name, and Complainant asserts that Respondent has never been known by that name. Respondent has not answered the Complaint with any information contradicting Complainant’s assertion. Furthermore, the WHOIS database contains no information implying that Respondent is commonly known by the <companycausals.com> domain name. The Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See 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"); 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.
Respondent uses the <companycausals.com> domain
name, which is confusingly similar to Complainant’s COMPANYCASUALS.COM mark, to
present Internet users with links to products offered by Complainant’s
competitors. Respondent most likely
receives click-through fees in return for directing Internet users to other
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.’”).
Respondent’s
registration of the <companycausals.com> domain name is a
form of typosquatting in that it switches the order of two letters in
Complainant’s mark. Respondent’s
registration of this domain name is a clear attempt to capitalize on
typographical errors. Use of a
typosquatted version of Complainant’s mark in the disputed domain name is
further evidence of bad faith registration and use under Policy ¶
4(a)(iii). See 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.”); see also K.R. USA, INC.
v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration
and use of the <philadelphiaenquirer.com> and
<tallahassedemocrat.com> domain names capitalized on the typographical
error of Internet users seeking the complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith
pursuant to Policy ¶ 4(a)(iii)).
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 <companycausals.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, N. Y. (Ret.)
Dated: April 6, 2006
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