Schwaab, Inc. v. Admin c/o Jucco Holdings
Claim Number: FA0611000833023
Complainant is Schwaab, Inc. (“Complainant”), represented by Brian
C. Cholewa, of Quarles & Brady LLP,
The domain name at issue is <expresstamp.net>, registered with Nameking.Com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 8, 2006.
On November 7, 2006, Nameking.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <expresstamp.net> domain name is registered with Nameking.Com, Inc. and that Respondent is the current registrant of the name. Nameking.Com, Inc. has verified that Respondent is bound by the Nameking.Com, 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 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 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@expresstamp.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <expresstamp.net> domain name is confusingly similar to Complainant’s EXPRESS STAMP mark.
2. Respondent does not have any rights or legitimate interests in the <expresstamp.net> domain name.
3. Respondent registered and used the <expresstamp.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Schwaab, Inc.,
is in the business of creating and selling custom, pre-inked stamps and other
types of stamps. In connection with the
promotion of its products Complainant holds a trademark registration for the
EXPRESS STAMP mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,530,121 issued January 15, 2002).
Additionally, Complainant uses the <expressstamp.com> domain name
to point to its commercial website.
Respondent registered the <expresstamp.net> domain name February 11, 2004. The disputed domain name points to a website that features a search engine portal and displays numerous links to third-party websites regarding aspects of stamping and pre-inked stamps.
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 asserts rights in the EXPRESS STAMP mark through registration with the USPTO. The Panel finds that Complainant’s registration of the EXPRESS STAMP mark is establish rights pursuant to Policy ¶ 4(a)(i). 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant asserts that the <expresstamp.net> domain
name is confusingly similar to its EXPRESS STAMP mark. The disputed domain name contains
Complainant’s mark in its entirety except for the omission of the letter “s” either
from the end of the term “express” or the beginning of the term “stamp” and
adds the generic top-level domain (“gTLD”) “.net.” The Panel finds that the omission of a single
letter, such as the letter “s” from Complainant’s mark fails to sufficiently differentiate
the disputed domain name for the purposes of Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Respondent’s
failure to submit a response in this case creates a presumption 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 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.”). The Panel, however, shall
analyze the evidentiary record to determine if Respondent holds rights or
legitimate interests in the disputed domain name.
Respondent is using its disputed domain name to resolve to a website that features a search engine portal and displays numerous links to third-party websites regarding stamping and pre-inked stamps, many of which are in direct competition with Complainant. The Panel finds that Respondent’s use of the disputed domain name neither qualifies as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
According to the WHOIS registry, Respondent registered the
disputed domain name as “Jucco Holdings” of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered the disputed
domain name in bad faith. It can be
inferred from the nature of the resulting website that Respondent is seeking
commercial gain by pointing the disputed domain name to a website that offers a
search engine portal and displays numerous advertisements for third-party
websites that deal with stamping and pre-inked stamps. Additionally, the resulting website is likely
to cause confusion among consumers as a result of the links that relate to
stamping, a market in which Complainant is involved. Accordingly, the Panel finds Respondent to
have registered and used the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iv).
See Bama
Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000)
(finding bad faith where the respondent used a misspelling of the complainant’s
famous mark to attract Internet users to a series of advertisements); see
also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”).
Moreover, Respondent’s registration and use of the disputed domain name to display advertisements for third-party, competing websites constitutes diversion and evidences disruptive 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 <expresstamp.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 26, 2006
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