Suzanne Deason v. Domain Magic, LLC
Claim Number: FA0612000869574
Complainant is Suzanne Deason (“Complainant”), represented by Richard
M. Blumenthal, of Vogt & Resnick, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <suzannedeason.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2007 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@suzannedeason.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <suzannedeason.com> domain name is identical to Complainant’s SUZANNE DEASON mark.
2. Respondent does not have any rights or legitimate interests in the <suzannedeason.com> domain name.
3. Respondent registered and used the <suzannedeason.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Suzanne Deason, has used her name as a mark in commerce since 1989 to promote her yoga and fitness training products and services. Complainant uses her SUZANNE DEASON mark in internet e-commerce, advertising, and other business-related material. Complainant also uses the mark in a series of yoga and fitness training videos for sale that have been licensed and distributed exclusively through Gaiam, Inc. since 1994.
The <suzannedeason.com>
domain name was first registered by NOLDC, Inc. on
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. 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.
It is not necessary for Complainant to hold a registered
trademark to establish rights in the SUZANNE DEASON mark. Common law rights in a mark are sufficient to
satisfy Policy ¶ 4(a)(i). See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Complainant has established common law rights in the SUZANNE DEASON mark through extensive and continuous use. Complainant has used the mark in commerce since 1989 within internet e-commerce, advertising, and other business-related materials. Complainant’s mark also appears in numerous yoga and fitness training videos that have been sold successfully since 1994. Therefore, the Panel finds that Complainant has created substantial consumer recognition in the SUZANNE DEASON mark sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <suzannedeason.com>
domain name uses Complainant’s SUZANNE DEASON mark in its entirety while
eliminating the space and adding the generic top-level domain “.com.” These slight modifications are necessary to
form a domain name and are therefore irrelevant under an analysis of Policy ¶
4(a)(i). Thus, the Panel finds that
Respondent’s <suzannedeason.com>
domain name is identical to Complainant’s SUZANNE DEASON mark under Policy ¶
4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <suzannedeason.com> 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). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant has alleged that Respondent has never been commonly known by the <suzannedeason.com> domain name. The WHOIS information identifies Respondent as “Domain Magic, LLC,” and the Panel can find no other evidence in the record suggesting that Respondent is commonly known by the name. Therefore, the Panel concludes that Respondent is not commonly known by the <suzannedeason.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is currently using the <suzannedeason.com> domain name to display hyperlinks to various
websites, some of which offer products and services that directly compete with
Complainant. Such use constitutes
neither 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 Trans Global
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <suzannedeason.com> domain name to redirect Internet users to Respondent’s website that displays various links to third-party sites, some of which offer goods and services that compete with Complainant. Because this potentially diverts business away from Complainant, such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); 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)).
Complainant has alleged that Respondent’s use of the <suzannedeason.com> domain name creates
a likelihood of confusion among consumers searching for Complainant’s
services. Specifically, consumers could
be confused as to the source, sponsorship, affiliation, or endorsement of the fitness
products and services that are promoted through some of the hyperlinks
available on Respondent’s website.
Respondent is attempting to commercially gain from this likelihood of
confusion; therefore, Respondent’s use of the disputed domain name constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see also Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
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 <suzannedeason.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 30, 2007
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