School Specialty, Inc. v. Dave Lazarus
Claim Number: FA0610000830699
Complainant is School Specialty, Inc. (“Complainant”), represented by Roxana Wizorek, of Godfrey & Kahn, S.C., 780 North Water Street, Milwaukee, WI 53202. Respondent is Dave Lazarus (“Respondent”), Largo Degli Osci, 12, Roma 00185, IT.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <saxart.com>, registered with Enom, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2006.
On October 31, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <saxart.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 November 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@saxart.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <saxart.com> domain name is confusingly similar to Complainant’s SAX mark.
2. Respondent does not have any rights or legitimate interests in the <saxart.com> domain name.
3. Respondent registered and used the <saxart.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, School Specialty, Inc., publishes, markets and distributes educational-related products and services under various marks, including SAX, SCHOOL SPECIALTY, CHILDCRAFT, CLASSROOM DIRECT, DELTA EDUCATION, SCHOOL SMART, SPORTIME and SUNBURST. Complainant’s products and services under the SAX mark provide assistance to education professionals teaching arts and crafts classes, including painting, drawing, ceramics, sculpture, printmaking, jewelry making, mosaics and stained glass. Complainant sells its SAX products through a website at the <saxarts.com> domain name and also through catalogs and at retail stores.
Complainant also holds a trademark registration for the SAX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,257,283 issued June 29, 1999; Reg. No. 2,407,936 issued November 28, 2000; Ser. No. 78/795,166 filed January 19, 2006).
Respondent registered the <saxart.com> domain name on November 28, 2004. The website at the disputed domain name contains links such as “Art Lessons,” “Sax Catalog” and “Teacher Resources” that resolve to the websites of competing art supply companies, including <misterart.com>, <staples.com>, <studentmarket.com> and <dickblick.com>.
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 SAX mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <saxart.com> domain name incorporates Complainant’s entire registered SAX mark and simply adds the term “art.” Complainant’s products and services under the SAX mark include art supplies and Complainant’s main website is located at the <saxarts.com> domain name. In Reed Elsevier Inc. & Reed Elsevier Props. Inc. v. Christodoulou, FA 97321(Nat. Arb. Forum June 26, 2001), the panel found that the <legallexis.com> and <legallexus.com> domain names were confusingly similar to Complainant’s LEXIS mark because the term “legal” describes the type of services Complainant offers under the LEXIS mark. Because Respondent’s <saxart.com> domain name also contains a term describing Complainant’s business, the disputed domain name is confusingly similar to the SAX mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <saxart.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the
<saxart.com> domain name. See
Geocities v. Geocities.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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the disputed domain name under the name “Free Communication Foundation,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <saxart.com> domain name. As a result, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to 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 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.”).
Moreover, Respondent’s <saxart.com> domain name, which is confusingly similar to Complainant’s SAX mark, resolves to a website featuring links to Complainant’s direct competitors. Use of the disputed domain name for commercial gain by misdirecting Internet users to third-party websites to earn referral fees does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s SAX mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s website at the <saxart.com> domain name resolved to a commercial web directory with sponsored links to various content unrelated to Complainant. The Panel infers that Respondent earned referral fees for each Internet user it diverted to other websites. As a result of Respondent taking advantage of the confusing similarity between the disputed domain name and Complainant’s SAX mark in order to profit from the goodwill associated with the mark, the Panel finds that Respondent registered and used the <saxart.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent’s registration and use of the disputed domain
names to divert Internet users to competing websites also suggests bad faith
registration and use according to Policy ¶ 4(b)(iii). In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel
found that the respondent had registered and used the <euro-disney.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to
a website promoting a competing theme park.
Because Respondent’s domain name also resolves to a website promoting
goods competing with Complainant, Respondent appears to be disrupting
Complainant’s business under the SAX mark.
Therefore, Respondent has demonstrated bad faith registration and use
under Policy ¶ 4(b)(iii). See Instron
Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that
the respondent registered and used the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate
websites that compete with Complainant’s business).
The Panel finds that Complainant has 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 <saxart.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 15, 2006
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