Claim Number: FA0704000954092
Complainant is California Academy of Sciences (“Complainant”), represented by Doyle
B. Johnson, of Reed Smith LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <steinhartaquarium.com>, registered with Enom, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 5, 2007.
On April 5, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <steinhartaquarium.com> domain name is registered with Enom, Inc., and that Respondent is the current registrant of the name. Enom, Inc., has verified that Respondent is bound by the Enom, Inc., 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 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 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@steinhartaquarium.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 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <steinhartaquarium.com> domain name is identical to Complainant’s STEINHART AQUARIUM mark.
2. Respondent does not have any rights or legitimate interests in the <steinhartaquarium.com> domain name.
3. Respondent registered and used the <steinhartaquarium.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, California Academy of Sciences, is a well-known natural history museum operating the Steinhart Aquarium, home to many species of aquatic life, including some which can only be found in captivity at the Steinhart Aquarium and others who are otherwise extinct in the wild. In connection with Complainant’s business, Complainant registered the STEINHART AQUARIUM mark with the United States Patent and Trademark Office (“USPTO”) and a trademark was issued July 7, 1987 (Reg. No. 1,446,845).
Respondent registered the <steinhartaquarium.com> domain name on October 27, 2005, and is using the disputed domain name to provide links to both related aquatic sites (namely Complainant’s Aquarium, aquarium suppliers, and fish tank resources) and non-related third-party sites, including those that relate to automobiles, education, and employment.
Additionally, Respondent has been a participant in several other UDRP decisions in which disputed domain names held by Respondent were transferred to the respective complainants. See Lenox Financial Mortgage, LLC v. Digi Real Estate Found., FA D2006-1047 (WIPO Nov. 28, 2006); Metro. Life Ins. Co. v. Digi Real Estate Found., FA 812352 (Nat. Arb. Forum Nov. 20, 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.
Complainant has established rights in the STEINHART AQUARIUM mark under Policy ¶ 4(a)(i) through registration with the USPTO. See 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.”); see also 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.”).
Respondent’s <steinhartaquarium.com> domain name is identical to Complainant’s STEINHART AQUARIUM mark since the sole addition of the generic top-level domain “.com” is irrelevant in evaluating the similarity of the disputed domain name and Complainant’s STEINHART AQUARIUM mark under Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also 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).
The Panel concludes Complainant has met Policy ¶ 4(a)(i).
With respect to the <steinhartaquarium.com> domain name, Complainant bears the initial burden of proof in establishing Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has made the prima facie showing, the burden shifts to Respondent to prove Respondent holds rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”).
Here, Respondent has offered no evidence and there is no evidence in the record to indicate Respondent is licensed to register domain names featuring Complainant’s STEINHART AQUARIUM mark, nor does the evidence suggest Respondent is somehow associated with, affiliated with or sponsored by Complainant. Additionally, Respondent’s WHOIS information does not lend itself to a finding that Respondent is commonly known by the <steinhartaquarium.com> domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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.”); see also 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).
Further, the present record is unable to support a finding
that Respondent’s registration and use of the <steinhartaquarium.com> domain name is in connection with 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). Respondent’s <steinhartaquarium.com> domain
name resolves to a list of third-party links to other aquatic websites, likely
to confuse Internet users attempting to reach Complainant. Moreover, Respondent’s resulting website
contains other links completely unrelated to Complainant’s business, including
employment and automobile information.
The Panel infers from Respondent’s use that it is attempting to commercially
benefit through the collection of click-through fees as users pass through the
site. Respondent’s use of Complainant’s
STEINHART AQUARIUM mark in its entirety, coupled with third-party links both
related and unrelated to Complainant, is inconsistent with Policy ¶¶ 4(c)(i) and (ii). 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 Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see
also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat.
Arb. Forum May 6, 2003) (holding that
the respondent’s use of the complainant’s mark and the goodwill surrounding
that mark as a means of attracting Internet users to an unrelated business was
not a bona fide offering of goods or services).
The Panel concludes
Complainant has met Policy ¶ 4(a)(ii).
The Panel finds Respondent’s incorporation of Complainant’s STEINHART AQUARIUM in its entirety amounts to bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through intentional diversion. See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘<singaporeairlines.com>’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated the complainant’s name); 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).”).
Additionally, the exact likeness of Complainants STEINHART AQUARIUM mark in Respondent’s <steinhartaquarium.com> domain name amounts to bad faith registration and use under Policy ¶ 4(b)(iv) through intentional diversion of Internet traffic by Respondent to third-party sites for commercial gain. The uncontested evidence in the record permits the Panel to infer Respondent receives click-through fees by diverting Internet users to the listed third-party sites. 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 H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Moreover, the Panel also finds Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(ii) based on Respondent’s involvement in several previous UDRP decisions in which the disputed domain names were transferred to the respective complainants. See Lenox Financial Mortgage, LLC v. Digi Real Estate Found., FA D2006-1047 (WIPO Nov. 28, 2006); Metro. Life Ins. Co. v. Digi Real Estate Found., FA 812352 (Nat. Arb. Forum Nov. 20, 2006). The presence of such evidence permits the Panel to infer a pattern of bad faith on behalf of Respondent through registration and use of infringing domain names. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
The Panel concludes Complainant has met Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steinhartaquarium.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 5, 2007
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