SparkPeople Inc. v. Hank
Claim Number: FA0606000734851
Complainant is SparkPeople Inc. (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinnati, OH, 45202. Respondent is Hank (“Respondent”), Billgates, Sonogoo 38499, Herocoto, Bingkaso 506-761 GL.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sparkpeople.net>, registered with Onlinenic, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 20, 2006; the National Arbitration Forum received a hard copy of the Complaint June 21, 2006.
On June 22, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <sparkpeople.net> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 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@sparkpeople.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <sparkpeople.net>, is identical to Complainant’s SPARKPEOPLE mark.
2. Respondent has no rights to or legitimate interests in the <sparkpeople.net> domain name.
3. Respondent registered and used the <sparkpeople.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SparkPeople Inc., is an online resource and service provider for people who want to attain and maintain health and fitness. Complainant holds a trademark registration for the SPARKPEOPLE mark in the European Community (Reg. No. 003817582 issued July 25, 2005, filed April 30, 2004). Complainant has filed for trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Serial No. 76/269,328 filed June 8, 2001) and the Canadian Intellectual Property Office (“CIPO”) (Serial No. 1,219,262 filed June 4, 2004). Complainant also operates a website at <sparkpeople.com>. Complainant has used its SPARKPEOPLE mark since at least February 2000.
Respondent registered the <sparkpeople.net> domain name December 13, 2004. Respondent’s disputed domain name resolves to a website that displays links for related and unrelated third-party websites, 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 will draw such inferences as the Panel 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 Complainant to 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 trademark registrations and applications sufficiently establish Complainant’s rights in the SPARKPEOPLE mark. Furthermore, the Panel finds that these rights extend back to the filing date of the trademark in the European Community, which pre-dates the registration of the domain name and solidifies Complainant’s rights in the mark since at least that time. See 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); 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).
The domain name that Respondent registered, <sparkpeople.net>, is identical to Complainant’s SPARKPEOPLE mark as the only distinction between the disputed domain name and Complainant’s mark is the addition of a generic top-level domain name (“gTLD”), which does not eliminate the identical nature between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent lacks such rights or legitimate interests in the <sparkpeople.net> 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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <sparkpeople.net> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
However, the Panel examines the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c). Complainant asserts that Respondent is not
authorized to use Complainant’s SPARKPEOPLE mark, and that 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 domain name. No evidence in the record suggests that
Respondent is or has ever been known by the disputed domain name. Consequently, the Panel finds that
Respondent is not commonly known by the disputed domain name under 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 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.”).
The evidence on record indicates
that Respondent is using the disputed domain name to divert Internet users
attempting to locate Complainant’s website to Respondent’s website, presumably
for Respondent’s own commercial benefit through receiving click-through fees
from the third-party links displayed on Respondent’s website. In Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found that
the respondent’s demonstrated intent to divert Internet users who sought
complainant's website to a website of the respondent and for the respondent's
benefit was not a bona fide offering of goods or services under Policy ¶
4(c)(i) and not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
The Panel finds that Respondent’s use of the disputed domain name is not
a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith by
registering and using the disputed domain that contains Complainant’s
SPARKPEOPLE mark in its entirety.
Respondent is using the <sparkpeople.net> domain name to
redirect Internet users seeking Complainant’s website to a website that
features links to related and unrelated third-party websites, some of which are
in direct competition with Complainant.
The Panel finds that such use constitutes disruption of Complainant’s
business and is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain name
to promote competing auction sites); see
also 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)).
Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for the links displayed on the website that resolves from
the disputed domain name. Conduct to gain
such commercial benefit constitutes bad faith registration and use under Policy
¶ 4(b)(iv).
The Panel additionally
finds that Respondent’s disputed domain name is capable of creating confusion
as to Complainant’s sponsorship and affiliation with the disputed domain name,
which is further evidence of bad faith registration and use. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); 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 Complainant
satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sparkpeople.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 3, 2006.
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