Zendex Tool Corp. v. Whois ID Theft Protection
Claim Number: FA0703000933303
Complainant is Zendex Tool Corp. (“Complainant”), represented by Fred
H. Perkins, of Morrison Cohen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gojack.com>, registered with Rebel.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 4, 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@gojack.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 <gojack.com> domain name is confusingly similar to Complainant’s GOJAK mark.
2. Respondent does not have any rights or legitimate interests in the <gojack.com> domain name.
3. Respondent registered and used the <gojack.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zendex Tool Corp., is a leading manufacturer and seller of automotive tools. One of its products is a device that allows a single person to lift and move an automobile, a tool that Complainant markets under the GOJAK mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the GOJAK mark (Reg. No. 1,501,252 issued August 23, 1988). Additionally, Complainant operates a website at the <gojak.com> domain name.
Respondent registered the <gojack.com> domain
name 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. 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’s registration with the USPTO for the GOJAK mark
sufficiently establishes Complainant’s rights in that mark under Policy ¶
4(a)(i). See AOL LLC v. Interrante,
FA 681239 (Nat. Arb. Forum
The Panel finds that Respondent’s <gojack.com> domain name is confusingly similar to Complainant’s GOJAK mark under Policy ¶ 4(a)(i) as it contains Complainant’s mark in its entirety with the addition of the letter “c” to the mark. This addition does not distinguish the disputed domain name from Complainant’s mark as the mark and the disputed domain name are phonetically identical. The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant, as a gTLD is a required part of every domain name. Accordingly, the Panel finds the addition of the letter “c” as well as the addition of the gTLD “.com” do not sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <gojack.com> 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 in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); 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 mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <gojack.com> domain name and there is no other information in the record to indicate that Respondent is or has ever been known by the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name under 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 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 using the disputed domain name to operate a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. The Panel finds, based on the uncontested evidence presented by Complainant, that such use of the <gojack.com> domain name is for Respondent’s own commercial benefit through the accrual of click-through fees. Such use qualifies as neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); 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 <gojack.com> domain name. Based on the uncontested evidence presented by Complainant, the Panel finds that Respondent receives click-through fees for the links displayed on the website that resolves from the disputed domain name. Such commercial benefit constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Additionally, Respondent’s disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source and affiliation with the <gojack.com> domain name and corresponding website, which is further evidence of bad faith registration and use under 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds further evidence of bad faith registration and use under Policy ¶ 4(b)(iii), as the disputed domain name resolves to a website where hyperlinks to some of Complainant’s competitors are displayed. Such use is a disruption of Complainant’s business and qualifies as evidence of bad faith registration and use. See 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)(iii) 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); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).
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 <gojack.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 19, 2007
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