Electronics For Imaging, Inc. v. Spiral Matrix
Claim Number: FA0604000672430
Complainant is Electronics For Imaging, Inc. (“Complainant”), represented by Amanda Laura Nye, of Greenberg Traurig, LLP, 2450 Colorado Avenue, Suite 400E, Santa Monica, CA 90404. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <efifiery.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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 April 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 7, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <efifiery.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 April 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@efifiery.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 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 <efifiery.com> domain name is confusingly similar to Complainant’s EFI and FIERY marks.
2. Respondent does not have any rights or legitimate interests in the <efifiery.com> domain name.
3. Respondent registered and used the <efifiery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Electronics For Imaging, Inc., provides digital imaging and print management solutions services for the commercial and enterprise printing industry. Complainant operates twenty-two offices worldwide and has over 12 million users around the world. Complainant has continuously used the EFI mark since 1989 and the FIERY mark since 1991 in connection with its printing and imaging services.
Complainant holds numerous trademark registrations for the EFI and FIERY marks worldwide. Complainant has registered both marks with the United States Patent and Trademark Office (“USPTO”) (EFI: Reg. No. 1,822,475 issued February 22, 1994; FIERY: Reg. No. 1,712,639 issued September 1, 1992; Reg. No. 2,282,435 issued October 5, 1999).
Respondent registered the <efifiery.com> domain name on June 23, 2005 and is using it to operate an online directory featuring links to Complainant’s competitors in the printing and imaging industry, as well as to unrelated content.
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 EFI and FIERY
marks by registering the marks 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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <efifiery.com>
domain name is confusingly similar to Complainant’s
EFI and FIERY marks because the domain name includes both registered marks in
their entirety and merely combines them into one term. In Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000), the panel found that the
<pokemonpikachu.com> domain name was confusingly similar to the
complainant’s POKEMON and PIKACHU marks because the respondent combined both
marks in order to form the domain name.
Likewise, Respondent has also combined Complainant’s registered marks
into one domain name, which renders the <efifiery.com> domain name
confusingly similar to Complainant’s EFI and FIERY marks pursuant to Policy ¶
4(a)(i). See G.D. Searle & Co.
v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding
that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <efifiery.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden 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) (holding that, where the complainant has
asserted that the 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”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <efifiery.com>
name. See 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); see also 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”). 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 “Spiral
Matrix,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <efifiery.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Respondent’s <efifiery.com> domain
name, which is confusingly similar to Complainant’s EFI and FIERY marks,
resolves to a directory webpage featuring links to Complainant’s competitors in
the printing and imaging industry and to unrelated content. In Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the
respondent registered the <nicklausgolf.com> domain name, which included
the complainant’s NICKLAUS mark, and used it to operate a search engine
displaying links to third-party websites.
The panel held that the respondent’s diversion of Internet users to
websites unrelated to the complainant’s mark did 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). Because Respondent is also diverting Internet users
seeking Complainant’s products to a directory webpage containing links to
third-party websites and presumably earns click-through fees for each customer
it redirects to these websites, its use of the disputed domain name provides
evidence that it lacks rights and legitimate interests in the <efifiery.com>
domain name. 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <efifiery.com> domain
name, which is confusingly similar to Complainant’s EFI and FIERY marks, to redirect
Internet users seeking Complainant’s printing and imaging services to an
Internet directory displaying links to Complainant’s competitors and to other content. In Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003), the respondent registered the <mailonsunday.com> domain
name, which included the complainant’s THE MAIL ON SUNDAY mark, and was using
the domain name to provide links to competing newspapers and to third-party
websites. The panel held that such use
provided evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv), because Respondent “presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’” Here, the Panel infers that Respondent also receives
click-through fees for each Internet user it diverts to other websites and is,
therefore, taking advantage of the confusing similarity between the disputed
domain name and Complainant’s mark.
Such use of the disputed domain name to profit from the goodwill
associated with Complainant’s mark is indicative of bad faith registration and
use under Policy ¶ 4(b)(iv). 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).
In addition, the Panel finds that Respondent has violated Policy ¶ 4(b)(iii) by registering and using the <efifiery.com> domain name to display links to Complainant’s competitors in the printing and imaging industry. Because Respondent is diverting Internet users seeking Complainant’s printing and imaging services to competing websites, Respondent has registered and used the disputed domain name for the purpose of disrupting Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (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 <efifiery.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 26, 2006
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