Satterwhite Companies, Inc. v. Web Master
Claim Number: FA0605000702622
Complainant is Satterwhite Companies, Inc. (“Complainant”), represented by Bernard C. Dietz, of Dozier Internet Law P.C., 301 Concourse Boulevard, West Shore III, Suite 300, Glen Allen, VA 23059. Respondent is Web Master (“Respondent”), General Delivery, Georgetown, Grand Cayman GT, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <satterwhite.com>, registered with Addrcreat.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2006.
On May 9, 2006, Addrcreat confirmed by e-mail to the National Arbitration Forum that the <satterwhite.com> domain name is registered with Addrcreat and that Respondent is the current registrant of the name. Addrcreat has verified that Respondent is bound by the Addrcreat 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@satterwhite.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 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge 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 <satterwhite.com> domain name is identical to Complainant’s common law SATTERWHITE mark.
2. Respondent does not have any rights or legitimate interests in the <satterwhite.com> domain name.
3. Respondent registered and used the <satterwhite.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Satterwhite Companies, Inc., has continuously and extensively used the SATTERWHITE mark in connection with the sale of log home materials and design services since 1974. Complainant has delivered more than 14,000 log homes across the United States and internationally under the SATTERWHITE mark. Additionally, Complainant has featured the SATTERWHITE mark on its company website and in advertisements in national log home industry and lifestyle magazines. Furthermore, Complainant has been the subject of numerous newspaper articles that feature their goods and services. As a result, the SATTERWHITE mark has generated substantial goodwill in connection with the sale of log home materials and design services.
Respondent registered the <satterwhite.com> domain name on March 24, 2004. The disputed domain name resolves to a website that features links to various competing and non-competing websites, including a gambling website.
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 is not required to hold a trademark registration
to establish rights in the SATTERWHITE mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”).
For the purposes of Policy ¶ 4(a)(i), Complainant has established common law rights in the SATTERWHITE mark through continuous and extensive use of the mark in connection with the sale of log home materials and design services since 1974. The Panel finds that Complainant is nationally well known for their goods and services in the log home industry and has created substantial goodwill towards the SATTERWHITE mark. Consequently, the Panel finds that Complainant has generated sufficient secondary meaning in the SATTERWHITE mark to establish common law rights. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Furthermore, Respondent’s <satterwhite.com> domain name is identical to Complainant’s common law SATTERWHITE mark, because it incorporates Complainant’s mark in its entirety and adds the generic top-level domain “.com.” 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <satterwhite.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then rests with Respondent to prove 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 respond to the Complaint creates a presumption that Respondent lacks rights or legitimate interests in the <satterwhite.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel, however, chooses to examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent’s domain name resolves
to a website that features links to various competing and non-competing
websites, including a gambling website, for which Respondent presumably
receives referral fees. The Panel finds
that such use of an identical domain name does not amount to 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). 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 Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name); 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 the respondent was using the
complainant’s mark to redirect Internet users to a website offering credit card
services unrelated to those services legitimately offered under the
complainant’s mark). Cf. Société des Bains de Mer v. Int’l Lotteries,
D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where
Respondent used the <casinomontecarlo.com> and
<montecarlocasinos.com> domain names in connection with an online
gambling website).
Furthermore, according to the WHOIS database, the registrant of the <satterwhite.com> domain name is “Web master,” and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name and has failed to demonstrate rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (rejecting the claim that the respondent was commonly known by the “Red Bull” nickname ever since its childhood years because the respondent did not provide any evidence to support the contention).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a website that features links to various competing and non-competing websites, including a gambling website. Complainant presents an uncontested assertion that Respondent receives commercial gain from the redirection of Internet users to those websites. Additionally, Complainant asserts that the use of the SATTERWHITE mark contained in its entirety in the disputed domain name will cause confusion as to Complainant’s sponsorship of or affiliation with the resulting website. The Panel therefore concludes that Respondent’s registration and use of the identical <satterwhite.com> domain name for commercial gain constitutes bad faith 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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <marssmusic.com>, which is identical to the complainant’s mark, to a gambling website).
Moreover, the Panel finds that Respondent’s use of a domain
name that is identical to Complainant’s common law mark to redirect Internet
users to a website that features links to competing websites constitutes
disruption and evidences bad faith pursuant to Policy ¶ 4(b)(iii). See 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).”); see also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
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 <satterwhite.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 20, 2006
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