Sharyn Read v. Dotzup.com Inc. (a/k/a Keyword Traffic)
Claim Number: FA0605000702436
Complainant is Sharyn Read (“Complainant”), P.O. Box 160651, Sacramento, CA 95816. Respondent is Dotzup.com Inc. (a/k/a Keyword Traffic) (“Respondent”), 4235 S. Cheney-Spokane Rd, Suite 10, Spokane, WA 99224-9661.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <emugold.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 10, 2006.
On May 6, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <emugold.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 May 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 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@emugold.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <emugold.com> domain name is identical to Complainant’s EMU GOLD mark.
2. Respondent does not have any rights or legitimate interests in the <emugold.com> domain name.
3. Respondent registered and used the <emugold.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sharyn Read, uses the EMU GOLD trademark in conjunction with Emu Oil for use in the manufacture of pharmaceuticals and cosmetics. Complainant has used the EMU GOLD mark since March 14, 1995, and holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the EMU GOLD mark (Reg. No. 2,380,441 issued August 29, 2000).
Respondent registered <emugold.com> domain name on February 12, 2004. Respondent’s disputed domain name resolves to a website that displays links to third-party websites that are unrelated to Complainant, some of which are 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.
The Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the EMU GOLD mark. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that Respondent’s <emugold.com> domain name is identical to Complainant’s EMU GOLD mark pursuant to Policy ¶ 4(a)(i). The addition of the generic top-level domain name “.com” to Complainant’s EMU GOLD trademark does not sufficiently differentiate Respondent’s domain name from Complainant’s mark. In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found the pomellato.com domain name identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO was not relevant. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark). In addition, the domain name is identical to the mark despite the lack of a space between the terms “emu” and “mark.” See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See 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”); 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).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s EMU GOLD mark, and Respondent is not associated with Complainant
in any way. Furthermore, Respondent’s
WHOIS information does not suggest that Respondent is commonly known by the
disputed name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000), the panel found no rights or legitimate interests 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 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).
Furthermore, in Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003), the panel found that given the WHOIS contact
information for the disputed domain name, it could be inferred that the
respondent, Onlyne Corporate Services11, was not commonly known by the name
‘welsfargo’ in any derivation.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record indicates
that Respondent is using the disputed domain name to operate a website which
provides links to third-party websites that offer goods and services in direct
competition with Complainant’s business.
In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003), the panel found that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with those
offered by the complainant under its marks).
In addition, Respondent offered that the disputed domain name was for sale on its website, <keyword-domain-sales.us>. The Panel finds that this is further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites). Therefore, in the instant case, the Panel finds that Respondent’s offer to sell the disputed domain name does not constitute 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.
Complainant alleged that Respondent acted in bad faith by registering and using a domain name that contains Complainant’s registered mark in its entirety. Respondent displayed an advertisement on its website offering that they were willing to sell the disputed domain name for $349. After an offer from Complainant to purchase the disputed domain name for $300, the original price was increased to $500, which is in excess of Respondent’s out-of-pocket expenses. The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith on Respondent’s part under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Respondent is using the <emugold.com> domain
name to redirect Internet users to Respondent’s commercial website that
features links to competing third-party websites. In EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000), the panel found that the respondent registered and
used the domain name <eebay.com> in bad faith where the respondent used
the domain name to promote competing auction sites. See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)). As such, the Panel finds that Respondent’s use of the
disputed domain name constitues disruption and is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii).
Respondent is using the disputed domain name to divert
Internet users to a website that displays links to third-party websites that
are unrelated to Complainant, some of which are in direct competition with Complainant. Based on the uncontested evidence presented
by Complainant, the Panel infers that Respondent receives click-through fees
for diverting Internet users to third-party websites. See Qwest Comm’ns Int’l Inc. v. Ling
Shun Shing, FA 187431 (Nat. Arb. Forum
Oct. 6, 2003) (“Respondent has attempted to commercially benefit from
the misleading <qwestwirless.com> domain name by linking the domain name
to adult oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's
mark with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”).
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 <emugold.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 19, 2006
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