DiscoverU v. Tan Kim Fong
Claim Number: FA0703000934477
Complainant is DiscoverU (“Complainant”), represented by James
R. Davis, of Arent Fox PLLC,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <discoveru.com>, registered with DotRegistrar.
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 Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2007.
On March 9, 2007, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <discoveru.com> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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@discoveru.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <discoveru.com> domain name is identical to Complainant’s DISCOVERU mark.
2. Respondent does not have any rights or legitimate interests in the <discoveru.com> domain name.
3. Respondent registered and used the <discoveru.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DiscoverU, has used the DISCOVERU mark in connection with providing information as well as educational and recreational programs for professional and personal development since 1992. Complainant has registered the domain names <discoveru.org> and <discoveru.net>, which it has used to advertise and promote its products since 1998.
Respondent registered the <discoveru.com> domain name on November 13, 2001. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying links to goods and services in competition with Complainant’s goods and services under the DISCOVERU mark. Respondent has a history of registering well known, third-party marks including, the AOL mark in America Online, Inc. v. Tan Kim Fong, FA 590806 (Nat. Arb. Forum Dec. 16, 2005) and the mark EXPEDIA in Expedia, Inc. v Tan Kim Fong, FA 827672 (Nat. Arb. Forum Dec. 5, 2006).
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.
It is not necessary for Complainant to hold a registered
trademark to establish rights in the DISCOVERU mark. Common law rights in a mark are sufficient to
satisfy Policy ¶ 4(a)(i). See
Complainant has established common law rights in its DISCOVERU mark through extensive and continuous use of the mark since at least 1992. While the mark is not a registered trademark, Complainant is commonly known by the DISCOVERU mark. The Panel finds that Complainant has created substantial consumer recognition in the DISCOVERU mark sufficient to establish Complainant’s 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <discoveru.com> domain name is identical to Complainant’s DISCOVERU mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” to it. The Panel finds that the mere addition of a gTLD is not a distinguishing difference and, therefore, Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”).
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 <discoveru.com> domain name. Complainant must make a prima facie case and then the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”). The Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name here because Respondent has failed to respond to the Complaint. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will consider all available evidence in determining whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is using the <discoveru.com>
domain name to redirect Internet users to Respondent’s website displaying links
to third-party websites selling competing goods and services. Respondent’s use of the disputed domain name
to redirect Internet users to competing websites is not a use in connection
with 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 eBay Inc. v. Hong, D2000-1633 (WIPO
Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire
mark in domain names makes it difficult to infer a legitimate use); 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); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each
misdirected Internet user).
Additionally, Respondent has offered no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <discoveru.com> domain name. Respondent’s WHOIS information identifies Respondent as “Tan Kim Fong.” Therefore, Respondent has failed to establish rights or legitimate interests in the <discoveru.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent has a history of registering domain names incorporating
well-known, third-party marks. See, e.g., America Online, Inc. v. Tan Kim Fong, FA 590806 (Nat. Arb. Forum
Dec. 16, 2005) (incorporation the AOL mark); see also Expedia, Inc. v Tan Kim Fong, FA 827672 (Nat. Arb. Forum
Dec. 5, 2006) (incorporating the EXPEDIA mark).
The Panel finds that Respondent’s continuing pattern of registering
domain names incorporating well-known marks constitutes bad faith pursuant to
Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a
pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii)
when the respondent previously registered domain names incorporating well-known
third party trademarks); see also N.H.
Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Nat. Arb. Forum Nov. 3,
2003) (finding that the complainant’s submission of WHOIS evidence that listed
the respondent as the registrant of other domain names incorporating
third-party trademarks was sufficient to establish that the respondent had a
pattern of registering and using domain names in bad faith pursuant to Policy ¶
4(b)(ii)).
Additionally, Respondent has registered and is using the <discoveru.com>
domain name, which is identical to Complainant’s DISCOVERU mark, in order to
redirect Internet users to Respondent’s website displaying links to third-party
websites offering competing goods and services.
The Panel finds that such use constitutes disruption and is evidence of
bad faith pursuant to Policy ¶ 4(b)(iii).
See 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); see also 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).”).
Finally, Respondent is using the <discoveru.com> domain name to redirect Internet users to Respondent’s website displaying links to competing third-party websites for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is identical to Complainant’s DISCOVERU mark, Internet users may become confused as to Complainant’s affiliation with the website. Presumably, Respondent is profiting from this confusion in the form of click-through-fees. As a result, Respondent’s use of the <discoveru.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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 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 <discoveru.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 13, 2007
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