National Arbitration Forum
DECISION
Claim Number: FA0702000926661
PARTIES
Complainant is Everglades Direct, Inc. (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty, Mooty & Bennet,
P.A., 500 IDS Center,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <timewise.com>, registered with DotRegistrar.com.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 28, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 28, 2007.
On February 28, 2007, DotRegistrar.com confirmed by e-mail to the
National Arbitration Forum that the <timewise.com> domain name is
registered with DotRegistrar.com and that
Respondent is the current registrant of the name. DotRegistrar.com
has verified that Respondent is bound by the DotRegistrar.com
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 March 7, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 27, 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@timewise.com by e-mail.
A timely Response was received and determined to be complete on March 26, 2007.
Complainant’s Additional Submission was received and determined to be
complete on March 30, 2007.
On March 29, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is the owner of and uses in commerce the trademark TIMEWISE
in connection with its business of marketing such products as display boards
and visual control boards for scheduling, organizing and time management.
Complainant’s mark was first registered with the United States Patent
and Trademark Office (“USPTO”) on May 17, 1966, registry number 0808641.
Respondent is a direct competitor of Complainant in the business of
selling display products relating to scheduling, organizing and time
management.
Respondent registered the disputed domain name on June 6, 2000, and
uses it to misdirect Internet users to its own website at www.magnatag.com for
commercial gain.
Respondent’s domain name is identical to Complainant’s mark except for
the addition of the generic top level domain “.com”.
Respondent is not authorized by Complainant to employ its mark in a
domain name.
Respondent is not commonly known by the contested domain name.
Respondent does not use the suspect domain name in connection with a bona fide offering of goods or services.
Respondent knew of Complainant’s rights in its mark when Respondent
registered the domain name.
When challenged by Complainant over its use of the disputed domain
name, Respondent offered to sell the domain to Complainant for $25,000, a sum
greatly in excess of its cost of acquisition.
B. Respondent
Respondent contends, among other things, that:
Respondent does not deny that Complainant owns the mark here in issue,
or that Complainant uses that mark in commerce as alleged in the Complaint.
Respondent does not deny that Complainant’s mark has been registered
with the USPTO as alleged.
Respondent does not deny that its domain name is confusingly similar to
Complainant’s registered mark.
Respondent admits that it sells display products relating to time
management and scheduling, as alleged.
Respondent admits that it operates a commercial website at
www.magnatag,com, as alleged in the Complaint.
Respondent acquired the disputed domain name in April of 2005, not in
2000 as alleged in the Complaint.
Respondent acquired and uses the contested domain name because it is
descriptive of the types of goods sold by Respondent.
C. Additional Submissions
Complainant’s Additional Submission contends, among other things, that:
Bad faith acquisition of a domain name satisfies the requirement of bad
faith registration under the Policy.
Complainant’s mark registration is uncontestable under the federal law
of the
FINDINGS
(1) the domain name registered by Respondent is
identical to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is being
used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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:
i.
the
domain name registered by Respondent is identical or confusingly similar to a trademark
or service mark in which Complainant has rights;
ii.
Respondent
has no rights or legitimate interests in respect of the domain name; and
iii.
the domain name
has been registered and is being used in bad faith.
Identical and/or Confusingly
Similar
We first examine whether Complainant has
rights in its claimed mark sufficient for purposes of the Policy. In this regard, Complainant asserts, and
Respondent does not deny, that Complainant owns the mark in question and that
that mark has been registered for decades with the USPTO. This uncontested evidence establishes
Complainant’s rights in its mark for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
We turn then to the question of identity-confusing similarity. On this point, it must be noted that the mark and the contested domain name are identical save for Respondent’s addition to the mark of the generic top-level domain. This difference is insufficient to distinguish the domain name for purposes of the Policy. 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;” see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000): "[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied by Complainant’s proofs.
Rights or Legitimate Interests
Under this head, Complainant must first make out a prima facie case in support of its allegations, at which point the burden shifts to Respondent to demonstrate that it has rights to or interests in its domain name enough to satisfy the requirements of the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by a complainant that a respondent has no right to or legitimate interest in its domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
On
the record before us, Complainant’s assertions are adequate to shift the burden
of proof to Respondent. Respondent, for
its part, does not deny either that it is a competitor of Complainant or that
its domain name is used to attract traffic to its commercial website, which
offers products like those offered by Complainant. These facts, in the circumstances here
presented, are enough to permit us to find that Respondent has no rights to or
legitimate interest in the contested domain name under Policy ¶ 4(a)(ii), because such competing
use 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services;” see also DLJ Long
Term Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed
domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain
name to divert Internet users to <visual.com>, where services that
compete with Complainant are advertised.”
Moreover, consistent with Complainant’s
allegation on the point, there is no evidence in the record to suggest that
Respondent has ever been commonly known by the disputed domain name as provided
in Policy ¶ 4(c)(ii).
Because Respondent offers no other credible evidence on which its possession of rights or interests under the Policy might be based, we are constrained to conclude that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
We have already determined that Respondent
is a competitor of Complainant and that Respondent’s domain name is used to
attract traffic to its commercial website, which offers products like those
offered by Complainant. Moreover,
Respondent concedes that it uses the domain name to attract Internet users to
its website precisely because the domain name is descriptive of the business of
selling display products relating to
time management and scheduling, the same business in which Complainant is
engaged. In the circumstances, there is
a high likelihood that Respondent’s use of its domain name will cause confusion
among Internet users as to the source, sponsorship, affiliation or endorsement
of Respondent’s website by Complainant.
It follows that Respondent’s conduct is within the ambit of Policy ¶
4(b)(iv) and that it therefore runs afoul of the bad
faith registration and use provisions of Policy ¶ 4(a)(iii). See TM Acquisition Corp. v.
Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith
where a respondent used a domain name, for commercial gain, to attract users to
a direct competitor of a complainant); see
also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)
where a domain name resolved to a website that offered products similar to
those sold under a complainant’s famous mark).
We also take note of the undenied allegation that
Respondent, when confronted by Complainant, attempted to sell the disputed
domain name to Complainant for $25,000, a sum greatly in excess of its cost of
acquisition. This is additional evidence
of bad faith registration and use. See Neiman Marcus Group, Inc. v.
AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct.
15, 2003) (finding a respondent’s offer to sell a domain name for $2,000 to
constitute evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum
Nov. 5, 2003): “Respondent registered the disputed domain name and offered to
sell it to Complainant for $10,600. This
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”
Finally under this head, it appears that Respondent registered the <timewise.com>
domain name with at least
constructive knowledge of Complainant’s rights in the TIMEWISE trademark by virtue of Complainant’s prior registration of that mark with
the United States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also
For all of these reasons, the Panel
finds that the requirements of Policy ¶ 4(a)(iii) have
been met by Complainant’s submissions.
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the
relief requested must be GRANTED.
Accordingly, it is Ordered that the <timewise.com> domain name be TRANSFERRED
forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 12, 2007
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