Parakeet Industria E Comercio De Roupasltda v. Cayman Trademark Trust
Claim Number: FA0607000758546
Complainant is Parakeet Industria E Comercio De Roupasltda (“Complainant”), represented by Robert G. Post, of Post & Romero, 3195 Ponce de Leon Blvd., Suite 400, Coral Gables, FL 33134. Respondent is Cayman Trademark Trust (“Respondent”), George Town, Grand Caym GT.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rygy.com>, registered with Bulkregister, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 26, 2006.
On July 26, 2006, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <rygy.com> domain name is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, 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 August 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 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@rygy.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 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <rygy.com> domain name is confusingly similar to Complainant’s registered R RYGY mark.
2. Respondent does not have any rights or legitimate interests in the <rygy.com> domain name.
3. Respondent registered and used the <rygy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
For over 25 years, Complainant, Parakeet Industria E
Comercio De Roupasltda, has manufactured and sold bathing suits and swimwear
around the world under the RYGY mark.
Complainant’s RYGY swimwear has been featured in numerous international
magazines such as Vogue, Sports Illustrated, People, Cosmopolitan
and Seventeen. Complainant has
spent substantial sums of money on advertising and marketing its products under
the RYGY mark.
Additionally, in connection with the sale and promotion of
its swimwear products, Complainant holds a trademark registration for the R
RYGY mark (Reg. No. 2,737,063 issued July 15, 2003) with the United States
Patent and Trademark Office (“USPTO”).
Complainant filed the application for the R RYGY mark with the USPTO on
June 7, 1999.
Respondent registered the <rygy.com> domain
name on March 23, 2003. The disputed
domain name resolves to a website that displays links to various third-party
websites that sell swimwear.
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 R RYGY mark through registration of the mark with the USPTO. 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.”). Additionally, once the USPTO issues a trademark registration, Complainant’s rights in the R RYGY mark apply retroactively to the date that the application was originally filed. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also 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).
Complainant asserts that the <rygy.com> domain name is confusingly similar to its R RYGY mark. The Panel finds that the omission of the single letter “r” and the addition of the generic top-level domain (“gTLD”) “.com” fails to distinguish the disputed domain name from Complainant’s registered mark. See Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006) (finding the <yokahamatires.com> domain name to be confusingly similar to the complainant’s Y YOKOHAMA mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Moreover, Complainant has sufficiently demonstrated that it has established substantial secondary meaning in the RYGY mark through its efforts in marketing and its presence in numerous international publications over the past 25 years. Accordingly, the Panel finds that Complainant has established sufficient common law rights in the RYGY mark for the purposes of Policy ¶ 4(a)(i). See 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”); 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).
The Panel finds that the disputed domain name is identical to Complainant’s common law RYGY mark. See 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); Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once such a prima facie case is established, the burden shifts squarely to Respondent, where it must affirmatively prove that it does have 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).”). The Panel finds that Complainant has successfully established a prima facie case through its uncontested assertions in the Complaint.
Respondent’s failure to submit a Response in this proceeding suggests that Respondent lacks rights and legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). The Panel, however, chooses to analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain name.
According to the WHOIS registry, the Registrant of the <rygy.com> domain name is “Cayman Trademark Trust.” Because there is no other evidence on record to suggest otherwise, the Panel must find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Additionally, Respondent is using the disputed domain name to redirect Internet users to a website that displays links to various third-party websites that sell swimwear for which Respondent presumably receives referral fees. The Panel finds that the use of a domain name that is identical or confusingly similar to Complainant’s registered or common law marks to display links to various third-party companies in the same industry as Complainant does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has registered and used
the disputed domain name in bad faith.
The Panel finds that the use of a disputed domain name that is either
confusingly similar or identical to Complainant’s registered or common law
marks is likely to cause confusion as to Complainant’s affiliation with or
sponsorship of the disputed domain name.
Additionally, it is reasonable for the Panel to infer that Respondent is
receiving commercial gain from click-through fees that are generated by
Internet users following the various links to third-party websites that offer
swimwear for sale from Respondent’s website.
Accordingly, the Panel finds that Respondent has registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); 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)).
Furthermore, the Panel finds that Respondent’s use of the disputed domain name to display advertisements to Complainant’s competitors constitutes disruption and evidences bad faith registration and use pursuant to 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)).
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 <rygy.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 8, 2006
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