Holiday Diver, Inc. v. Divers Direct spol. s r.o
Claim Number: FA0605000709191
Complainant is Holiday Diver, Inc. (“Complainant”), represented by John S. Artz, of Artz & Artz P.C., 28333 Telegraph Road, Suite 250, Southfield, MI 48034. Respondent is Divers Direct spol. s r.o (“Respondent”), Lazarska 8/13, Praha 2 12000 Czech Republic.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <divers-direct.net>, registered with Dynadot, Llc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2006.
On May 24, 2006, Dynadot, Llc confirmed by e-mail to the National Arbitration Forum that the <divers-direct.net> domain name is registered with Dynadot, Llc and that Respondent is the current registrant of the name. Dynadot, Llc has verified that Respondent is bound by the Dynadot, Llc 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 30, 2006, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 19, 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@divers-direct.net
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default On June 26, 2006, Respondent submitted an informal response in the form of an email. Since it was after the deadline and not in hard copy format, the Forum did not consider the Response to be in compliance with ICANN Rule #5(a). However, as directed by ICANN, the Forum forwarded it for the Panelist to decide whether it should be considered. Complainant was given the opportunity and did timely file an additional submission in reply to the late Response.
In his June 26, 2006 Response, the Respondent states that his brand name is a
trademark in the Czech Republic as evidenced by the attached registration. In reply, the Complainant notes that the Response was untimely and not in accordance with UDRP Rule 5(b) and therefore should not be considered. Further, the Respondent’s obtaining the Czech trademark was additional evidence of Respondent’s bad faith in the registration and maintenance of the domain name.
On June 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <divers-direct.net> domain name is identical to Complainant’s DIVERS DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <divers-direct.net> domain name.
3. Respondent registered and used the <divers-direct.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Holiday Diver, Inc., began using the DIVERS DIRECT mark as early as November 1998, and the mark was registered with the United States Patent and Trademark Office (“USPTO”) one year later (Reg. No. 2,290,719 issued November 2, 1999). Complainant uses the DIVERS DIRECT mark in connection with water sports and diving equipment, diving lessons and diving trips. Complainant operates a website at the <diversdirect.com> domain name which it uses to offer diving related goods and services.
Respondent registered the <divers-direct.net> domain name on October 3, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which offers diving related goods and services in competition with Complainant.
In it’s Supplemental filing, Complainant notes that Respondent filed for the trademark in the Czech Republic on April 14, 2004, which was 8 days after a National Arbitration Forum Panel had ruled in favor of the Complainant, and against Respondent, in a prior proceeding, transferring the domain name <divers-direct.com> to Respondent. Therefore, Respondent was aware at the time he filed for registration in the Czech Republic that his use of the name divers-direct infringed Complainant's United States Federally registered trademark for the mark DIVERS DIRECT. Respondent was also aware, via the April 8 decision, that the maintenance of a website using divers-direct with any nic extension would similarly infringe Complainant's United States Federally registered trademark for the mark DIVERS DIRECT. Even if the Czech trademark was validly obtained by Respondent, Complainant still has superior rights to use of the trademark on the Internet via its prior U.S. Federal Registration for the mark DIVERS DIRECT. The domain name <divers-direct.net> is unquestionably identical to Complainant's registered trademark "DIVERS DIRECT" and to Complainant's website at <diversdirect.com>.
The Respondent has also argued that his web page is in the Czech language. This
statement is both factually incorrect and misleading. At the time the Amended Complaint was filed, the website was available in English. Moreover, Complainant notes that only portions of the website have been changed to the Czech language. Most importantly, the website is still accessible to any user by typing the phrase <divers-direct.net>, and thus is likely to confuse consumers and prospective customers around the world, who are likely to be confused into believing that the domain name <divers-direct.net> is owned by or otherwise affiliated with Complainant and its DIVERS DIRECT.
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 DIVERS DIRECT mark
through the registration of the mark with USPTO. The Panel finds that registration of the mark establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”); 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.”). Additionally, the fact that Complainant holds a trademark
registration in the United States while Respondent’s primary place of business
is the Czech Republic does not in any way decrease Complainant’s rights in the
DIVERS DIRECT mark. See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of business).
Respondent’s <divers-direct.net> domain name is identical to Complainant’s DIVERS DIRECT mark. Because spaces cannot be included in domain names, hyphens are frequently used to take the place of spaces. Thus, the addition of a hyphen to Complainant’s mark does not differentiate Respondent’s domain name from Complainant’s mark. Further, the addition of a top-level domain, such as “.net” is required for all domain names and therefore, even with the addition of “.net,” Respondent’s domain name remains indistinguishable from Complainant’s mark. Thus, the Panel finds that Policy ¶ 4(a)(i) is satisfied. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) ([T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.").
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <divers-direct.net> domain name. This assertion is sufficient to create a prima facie case and shifts the burden to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s late response makes no mention of the fact that his obtaining the Czech trademark came shortly after he was advised by a National Arbitration Forum decision ruling in favor of this Complainant and against the Respondent, transferring the domain name <divers-direct.com> to Complainant. In so doing his act comes close to constituting a fraud upon the Panel. The untimelyness of his Response might be overlooked were it not compounded by lack of candor. Honesty and fair dealing is crucial to the process. Accordingly, the Panel feels the Respondent has completely failed to meet his burden. 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”). While these cases deal with defaulting Respondents, in light of the Panel’s opinions expressed above, the results are the same. Despite Respondent’s failure to respond adequately, the Panel will nonetheless evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent does not have rights or legitimate interests the <divers-direct.net>
domain name, which is identical to Complainant’s DIVERS DIRECT mark. Respondent is using the disputed domain name
to redirect Internet users to its website offering diving related goods and
services in direct competition with Complainant’s business operating under the
DIVERS DIRECT mark. Respondent’s use of
a domain name identical to Complainant’s mark to run a commercial website in
direct competition with Complainant, is neither a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not constitute
a bona fide offering of goods and services.”); see also 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 fact that a Panelist had ruled that Respondent had no rights or legitimate interest in the domain name <divers-direct.com> was notice, and should have been sufficient evidence to Respondent that he would have no rights or legitimate interests in the <divers-direct.net> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent is using the <divers-direct.net> domain
name to operate a commercial website offering goods and services identical to
those offered by Complainant. By using
the disputed domain name to offer diving and water sports related goods and
services Respondent is competing with Complainant. Respondent’s use of a domain name that is identical to
Complainant’s DIVERS DIRECT mark to offer goods and services in direct
competition with Complainant effectively disrupts Complainant’s business. Disruption of Complainant’s business is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting
the Mission KwaSizabantu approach and holding that “a respondent can
‘disrupt the business of a competitor’ only if it offers goods or services that
can compete with or rival the goods or services offered by the trademark
owner”); 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).”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding that, given the competitive relationship between the complainant
and the respondent, the respondent likely registered the contested domain name
with the intent to disrupt the complainant's business and create user
confusion).
Respondent’s <divers-direct.net>
domain name is identical to Complainant’s DIVERS DIRECT mark, making it
likely that internet users will be confused when searching for Complainant’s
goods and services. Respondent is
exploiting this potential confusion by attracting Internet users to its website
offering goods and services in competition with Complainant. Because Respondent’s domain name is
identical to Complainant’s mark, and because Respondent’s website offers
competing goods and services, Internet users may incorrectly believe that
Respondent’s website is affiliated with, or endorsed by, Complainant. Such use constitutes bad faith use and
registration pursuant to Policy ¶ 4(b)(iv).
See Identigene, Inc.
v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <divers-direct.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 7, 2006
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