CSAV, Inc. v. Jucco Holdings c/o Admin
Claim Number: FA0603000662211
Complainant is CSAV, Inc. (“Complainant”), represented by Kyle T. Peterson, of Patterson Thuente Skaar & Christensen P.A., 4800 IDS Center, 80 South 8th Street, Minneapolis, MN 55427. Respondent is Jucco Holdings c/o Admin (“Respondent”), 655 Flower St #337, Los Angeles, CA 90017.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheifmfg.com>, registered with Nameking.Com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2006.
On March 17, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheifmfg.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 18, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <cheifmfg.com> domain name is confusingly similar to Complainant’s CHIEF mark.
2. Respondent does not have any rights or legitimate interests in the <cheifmfg.com> domain name.
3. Respondent registered and used the <cheifmfg.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CSAV, Inc., is in the business of producing innovative mount features for televisions and A/V equipment. Complainant sells mounting solutions through a worldwide network of professional A/V and home theater dealers, who provide service to a vast array of businesses, consumers and educational facilities. Complainant has registered the CHIEF mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,834,438 filed January 6, 2003, issued April 20, 2004).
Respondent registered the <cheifmfg.com> domain name on January 26, 2004. Respondent is using the disputed domain name to operate a web directory featuring links to various third-party services and products, including television mount suppliers in direct 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 has established rights in the CHIEF mark through registration of the mark with the USPTO. Because Complainant filed for a trademark registration in 2003, before Respondent registered the <cheifmfg.com> domain name on January 26, 2004, Complainant’s rights to the mark predate Respondent’s registration of the domain name. 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 Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb.12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent has registered a domain name confusingly similar to Complainant’s CHIEF mark pursuant to Policy ¶ 4(a)(i), because the <cheifmfg.com> domain name simply misspells Complainant’s mark and adds the generic abbreviation “mfg,” which describes Complainant’s business of manufacturing display and television mount products. In
Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002), the panel found the respondent’s <neimanmacus.com> domain name confusingly similar to the complainant’s NEIMAN MARCUS mark because it represented a simple misspelling of the mark. Here, then, Respondent has failed to sufficiently distinguish its domain name from Complainant’s CHIEF mark by misspelling the mark and adding a generic term, rendering the domain name confusingly similar to the mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <cheifmfg.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to 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); 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).”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <cheifmfg.com> domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Jucco Holdings,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <cheifmfg.com> domain name. Consequently, Respondent has not established rights or legitimate interests in the <cheifmfg.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the domain name <greatsouthernwood.com> where the respondent linked the domain name to <bestoftheweb.com>).
Moreover, Respondent’s <cheifmfg.com> domain name, which is confusingly similar to Complainant’s CHIEF mark, resolves to a web directory containing links to Complainant’s direct competitors and to unrelated content. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Id. Because Respondent has used the disputed domain name to redirect Internet users to a website in direct competition with Complainant and is currently operating a web directory providing links to Complainant’s direct competitors, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <cheifmfg.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to redirect Internet users seeking Complainant’s display mount products to a web directory displaying links to competing websites and various unrelated content. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is also diverting Internet users seeking Complainant’s products and services to competing websites for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s CHIEF mark, and profiting from the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
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 <cheifmfg.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 5, 2006
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