Eye Jewels, Inc. v. Kenneth Chan
Claim Number: FA0607000758918
Complainant is Eye Jewels, Inc. (“Complainant”), represented by Wayne Carroll, of Law Office of Wayne Carroll. Respondent is Kenneth Chan (“Respondent”), 108 Bryant St., Mountain View, CA 94041.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <2cme.com>, registered with Dns Net Internet Service Gmbh.
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 July 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2006.
On July 27, 2006, Dns Net Internet Service Gmbh confirmed by e-mail to the National Arbitration Forum that the <2cme.com> domain name is registered with Dns Net Internet Service Gmbh and that Respondent is the current registrant of the name. Dns Net Internet Service Gmbh has verified that Respondent is bound by the Dns Net Internet Service Gmbh 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 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 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@2cme.com by e-mail.
Having received no response from Respondent, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default. Respondent requested additional time to respond but failed to
establish exceptional circumstances as required by Rule 5 to justify an
extension. Respondent's late Response as well as Complainant's
Additional Submission and the Respondent's Additional Submission were submitted
to the Panel for his review and possible consideration. If the Rules as
to time for filing are to mean anything they must be observed except
in rare instances where circumstances might justify an
extension. By doing otherwise everything becomes discretionary,
varying according to the whims of the various panelists. Since the
Respondent is “in default”, the Panel proceeded on that basis
without resorting to the Complainant's Additional Submission, although
timely filed, or the subsequent Additional Submission from the Respondent.
On August 29, 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 <2cme.com> domain name is identical to Complainant’s 2CME mark.
2. Respondent does not have any rights or legitimate interests in the <2cme.com> domain name.
3. Respondent registered and used the <2cme.com> domain name in bad faith.
B. Respondent failed to submit a conforming Response in this proceeding.
Complainant, Eye Jewels, Inc., is a provider of goods and
services to faciliate communication over the internet. Complainant’s goods and services are offered
worldwide, and Complainant operates a website at <2cme.tv> as a way for
customers to purchase their retail offerings.
Complainant first used its 2CME mark on or about February 1, 2003, and
holds a service mark registration with the United States Patent and Trademark
Office (“USPTO”) for the mark (Reg. No. 2,899,794 issued November 2,
2004).
Respondent registered the <2cme.com> domain name on November 14, 2005. Respondent’s disputed domain name is a parked website that a Google Service uses to display links to 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 has established rights in
the 2CME mark through its service mark registration with the USPTO. See 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.”); 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.”).
Respondent’s <2cme.com> domain name is identical to Complainant’s 2CME mark as it contains Complainant’s mark in its entirety with the addition of a generic top-level domain (“gTLD”) “.com.” In Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000), the panel held that the domain name <robohelp.com> was identical to the complainant’s registered ROBOHELP trademark, and that the addition of .com was not a distinguishing difference. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel therefore finds that the <2cme.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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 2CME mark and that Respondent is not associated with Complainant in any way. Moreover, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <2cme.com> domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence to support the assertion that a respondent was commonly known by a domain name, the assertion must be rejected. 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). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(a)(ii).
The evidence on record shows that Respondent is not personally using the disputed domain name, but rather is allowing a Google service to make use of the corresponding website, for which Respondent receives compensation. The disputed domain name’s corresponding website displays links to third-party websites, some of which are in direct competition with Complainant, and thus divert Internet users from Complainant’s website. The Panel finds that such use of the <2cme.com> domain name is not 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 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 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 finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the <2cme.com> domain name, which is
identical to Complainant’s mark.
Respondent is benefiting commercially from the disputed domain name by
receiving a fee from the Google service currently utilizing the website. Additionally, the use of Complainant’s 2CME
mark in the <2cme.com> domain name is capable of creating
confusion as to Complainant’s sponsorship and association with the disputed
domain name and corresponding website.
In Identigene, Inc. v. Genetest
Labs., D2000-1100 (WIPO Nov. 30, 2000), the panel found bad faith where the
respondent's use of the domain name at issue to resolve to a website where
similar services were offered to Internet users was likely to confuse the user
into believing that the complainant was the source of or was sponsoring the
services offered at the site. See
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.
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 <2cme.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 12, 2006
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