national
arbitration forum
DECISION
Sico Incorporated v. Marketing Total S.A.
Claim Number: FA0703000949597
PARTIES
Complainant is Sico Incorporated (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty,
Mooty, & Bennett, P.A., 500 IDS Center,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <sicoinsa.com>, registered with Capitoldomains, Llc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 2, 2007.
On March 30, 2007, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <sicoinsa.com> domain name is registered with Capitoldomains, Llc and that Respondent is the current registrant of the name. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc 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 April 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 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@sicoinsa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <sicoinsa.com> domain name is confusingly similar to Complainant’s SICO mark.
2. Respondent does not have any rights or legitimate interests in the <sicoinsa.com> domain name.
3. Respondent registered and used the <sicoinsa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, SICO Incorporated, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SICO mark (i.e., Reg. No. 748,458 issued April 23, 1963 and Reg. No. 908,400 issued February 23, 1971). Complainant has used the SICO mark for the sale of mobile folding goods and services including tables, stages, dance floors and mobile beds. Complainant has registered the <sicoinc.com> domain name which it uses in connection with the sale of its goods and services under the SICO mark.
Respondent registered the <sicoinsa.com> domain name on March 17, 2007. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying links to third party websites offering goods and services in competition with Complainant’s goods and services under the SICO mark. Respondent’s website also displays a search engine on the main page.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has established rights in the SICO mark through
registration of the mark with the USPTO.
See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also 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.”).
Respondent’s <sicoinsa.com> domain name is confusingly similar to Complainant’s mark because it uses Complainant’s mark in its entirety and merely adds the letters “insa” to it. The Panel finds that the mere addition of these letters does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark).
Additionally, Respondent has added the generic top level domain (“gTLD”) “.com” to Complainant’s mark. Panels have previously held that the mere addition of a gTLD does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See, e.g., 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); see also 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.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the <sicoinsa.com> domain name. Complainant’s allegations establish a prima facie case, which shifts the burden to Respondent to prove that it has rights or legitimate interests in the disputed domain name pursuant to 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 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 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.”).
However, the Panel will consider all available evidence in determining
whether Respondent has rights or legitimate interests in the disputed domain
name under Policy ¶ 4(c).
Complainant asserts that Respondent is using the <sicoinsa.com> domain name to redirect Internet users to Respondent’s website offering a search engine and displaying links to services in competition with Complainant. Respondent’s use of the disputed domain name to offer a search engine and display links to competing third party websites is not a use in connection with a bona fide offering of services or goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 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).
Additionally, Respondent offers no evidence and there is no evidence in the record to indicate that Respondent is commonly known by the <sicoinsa.com> domain name. Respondent’s WHOIS information identifies Respondent as “Marketing Total S.A.” Therefore, Respondent has failed to establish rights or legitimate interest in the <sicoinsa.com> domain name under Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that the respondent was not “commonly known by” the name “girls gon wild” or <girlsgonwild.com>); 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.
Registration and Use in Bad Faith
Respondent has registered and is using the <sicoinsa.com>
domain name, which is confusingly similar to Complainant’s SICO mark, to
redirect Internet users to Respondent’s website displaying links to competing
websites. The Panel finds that such use
constitutes disruption and is evidence of bad faith under 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).”).
Respondent is using the <sicoinsa.com> domain name to redirect Internet users to Respondent’s website that displays links to competing websites for the assumed profit of Respondent through click-through-fees. The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s SICO mark, Internet users may become confused as to Complainant’s affiliation with the disputed domain name. Presumably, Respondent is profiting from this confusion. As such, Respondent’s use of the <sicoinsa.com> domain name to redirect Internet users to websites offering competing goods and services constitutes bad faith registration and use under 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 that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sicoinsa.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 15, 2007
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