New Era Cap Company, Inc. v. New Era Cap Design, Ltd.
Claim Number: FA0607000747981
Complainant is New Era Cap Company, Inc. (“Complainant”), represented by Michael J. Berchou, of Phillips Lytle LLP, 3400 HSBC Center, Buffalo, NY 14203. Respondent is New Era Cap Design, Ltd. (“Respondent”), PO Box 115, West Bay, George Town WB KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <neweracaps.com>, registered with Signature Domains 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2006.
On July 13, 2006, Signature Domains LLC confirmed by e-mail to the National Arbitration Forum that the <neweracaps.com> domain name is registered with Signature Domains LLC and that Respondent is the current registrant of the name. Signature Domains LLC has verified that Respondent is bound by the Signature Domains 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 July 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 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@neweracaps.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 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 <neweracaps.com> domain name is confusingly similar to Complainant’s NEW ERA CAP mark.
2. Respondent does not have any rights or legitimate interests in the <neweracaps.com> domain name.
3. Respondent registered and used the <neweracaps.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, New Era Cap Company, Inc., is a well-known
manufacturer and seller of athletic caps.
Complainant has used its NEW ERA CAP mark in commerce for more than
fifty years, and holds a registration with the United States Patent and
Trademark Office (“USPTO”) for the mark (Reg. No. 2,550,756 issued March 19,
2002). Since 1996, Complainant has
operated a website in connection with its business at <neweracap.com>.
The <neweracaps.com> domain name was registered on May 23, 2002. Respondent’s disputed domain name currently resolves to a website that displays links for 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 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 trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the NEW ERA CAP
mark. See 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 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.”).
The Panel finds that Respondent’s <neweracaps.com> domain name is confusingly similar to Complainant’s NEW ERA CAP mark as it is the Complainant’s mark in its entirety and adds the letter “s.” Such an addition is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
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 <neweracaps.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts and Respondent must show 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 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”); 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 NEW ERA CAP mark, and that Respondent is not associated with
Complainant in any way. Although
Respondent appears to be known by the disputed domain name as evidenced by the
current registration information, which lists Respondent as “New Era Cap Design,
Ltd.” the Panel finds that Respondent is not actually known by the disputed
domain name, as there is no other evidence to support the registration name,
especially since the registrant was formerly “Modern Web Development.” See Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”). As there is no
other evidence in the record to suggest that Respondent is or has ever been
known by the <neweracaps.com> domain name, the Panel finds that
Respondent is not commonly known by the disputed domain name under 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The evidence on record shows that Respondent is using the disputed domain name to divert Internet users attempting to locate Complainant’s website and services to Respondent’s own website where Respondent displays links to third-party websites, some of which are in direct competition with Complainant. In Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the panel found that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel thus finds that Respondent’s use of the <neweracaps.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the <neweracaps.com> domain name. Respondent is using the disputed domain name
to redirect Internet users to a website that displays links that resolve to
various third-party websites, some of which are in direct competition with
Complainant. 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)). Therefore, the Panel finds that
Respondent’s use of the disputed domain name constitutes disruption and is
evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
Based on the uncontested evidence presented by Complainant, the Panel finds that Respondent is using the <neweracaps.com> domain name to benefit from Complainant’s mark by displaying links to various websites, some of which are in direct competition with Complainant. The Panel finds that the evidence indicates that Respondent is using the disputed domain name to commercially benefit via receiving click-through fees for the operation of its website. The Panel additionally finds that the use of Complainant’s mark in the <neweracaps.com> domain name is capable of creating confusion as to Complainant’s sponsorship and association with the disputed domain name and corresponding website. The Panel therefore concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(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 <neweracaps.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 28, 2006
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