National Arbitration Forum

 

DECISION

 

SDC Media, Inc. v. SCMedia

Claim Number: FA0704000960250

 

PARTIES

Complainant is SDC Media, Inc. (“Complainant”), represented by Marc J. Kesten, of Marc J. Kesten, P.L., 9220 NW 72nd St., Parkland, FL 33067.  Respondent is SCMedia (“Respondent”), 666 Burnhanthorpe Rd, Box 91018, Toronto, ON M9C 2Z4, Canada.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sdctravel.com> (the “Domain Name”), registered with Go Daddy Software, Inc.

 

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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2007.

 

On April 13, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <sdctravel.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 9, 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@sdctravel.com by e-mail.

 

A timely Response was received and determined to be complete on May 8, 2007.

 

A timely Additional Submission was received on May 14, 2007.

 

On May 14, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends:

 

- That Complainant owns the marks SDC, TRAVEL SDC, SDC TRAVEL, and SDC.COM, used in connection with travel services

 

- That SDC (short for “Swingers Date Club”) is the world’s largest alternative lifestyle site online, with over one million members worldwide, and with over 18,000,000 hits;

 

- That Complainant has been using the domain name <sdc.com> since acquiring it from a previous registrant in 2004, and has been using other related websites, <travelsdc.com> and <sdcmedia.com>, since January 2003, and <swingersdateclub.com> since July 2000;

 

- That Complainant has used the mark SDC since 1999 and obtained a United States federal registration for it in 2004.

 

-That Respondent uses a confusingly similar Domain Name for directly competing services, and further that Respondent copied Complainant’s web site design and layout;

 

- That Complainant sent an e-mail inquiry to the Domain Name and received a response not from Respondent in Canada but from one of Complainant’s main competitors – a Nevada corporation named Right Connections Travel;

 

- That Complainant sought to resolve this matter by sending a demand letter to Right Connections Travel and received in response a statement that Right Connections lacked any interest in the Domain Name;

 

- That the Domain Name suddenly ceased to resolve to Respondent’s website at about that time, but went back online in December 2006;

 

- That shortly after the letter was sent, the contact information for the registrant was changed to “Jeff Jefferson” and was shortly thereafter changed to “SCMedia,” a name strikingly similar to Complainant’s name “SDC Media.”

 

- That the Domain Name was registered to interfere with Complainant’s business and cause confusion; and moreover that there have been instances of actual confusion;

 

- That Respondent has no legitimate interests in the disputed domain name because Respondent is not commonly known as SDC, SDC Travel, or <sdctravel.com>.

 

- That Respondent’s conduct evidences bad faith by intentionally trying to cause customer confusion with Complainant’s well known family of SDC marks, domain names, and business names.

 

B. Respondent

 

Respondent contends:

 

- That Complainant does not own the trademarks SDC, Travel SDC, SDC Travel and SDC.com, primarily because no such marks are reflected in the Canadian Trademark Registry;

 

- That the Domain Name is different from the U.S. registered SDC mark in that it includes the word “travel” which is not part of Complainant’s registration;

 

- That Complainant’s assertions regarding first use are inconsistent because its United States trademark claims first use in commerce in 2004, yet its declaration claims first use in 1999;

 

- That Respondent had no knowledge of Complainant at the time of its registration;

 

- That any similarities between the websites of the two companies are coincidental and due to standard tab-navigation features; and that the two use different color schemes and banners;

 

- That Right Connections Travel is not the company offering Respondent’s services, but is one of the companies from whom Respondent sources its services;

 

- That Complainant failed to protect its claimed interests or act in a timely manner to enforce them, and only commenced this proceeding after seeing the success of Respondent’s marketing.

 

- That Respondent operates from Canada is not a direct competitor of Complainant’s U.S.-based business.

 

- That there is no proof of any buyer making a purchase as a result of the alleged confusion;

 

- That there was no deliberate attempt to deceive the public in the choice of the name “SC Media,” and that its similarity to Complainant’s name is a mere coincidence.

 

C. Additional Submissions

 

Complainant’s Additional Submission contends:

 

- That Respondent is not properly registered under the name Swingers Direct Connect [or Connection] Travel under Canadian law;

 

- That there is no inconsistency regarding Complainant’s claimed dates of first use in that both its trademark registration and its papers herein claim a first use date of 1999, well before Respondent registered the Domain Name;

 

- That as to any marks for which it does not yet hold federal trademark registrations, Complainant has common law rights predating any rights purportedly acquired by Respondent;

 

- That the two companies are direct competitors and in particular that Complainant has thousands of Canadian customers.

 

FINDINGS

The Panel finds that Complainant owns rights in the mark SDC used in connection with (inter alia) travel services; that the Domain Name is confusingly similar to the said mark; that Respondent lacks legitimate rights or interests in the Domain Name; and that Respondent registered and used the Domain Name 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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

 

It is undisputed that Complainant owns a United States trademark registration for the mark SDC, and has owned and used this mark for travel services since prior to Respondent’s registration of the Domain Name.  The addition to the SDC mark of the generic word “travel” does not make the Domain Name less confusing.  Indeed, it may well make it more confusing, since it appends a term that corresponds to one of the services offered by Complainant under its SDC mark.

 

Complainant has submitted evidence of its service mark registration for the SDC mark that it holds with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,818,125 issued February 24, 2004).  This trademark registration establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

The <sdctravel.com> domain name is confusingly similar to the SDC mark because Complainant is a travel company and the disputed domain name combines its SDC mark with the term “travel.”  The addition of a term describing Complainant’s business is insufficient to differentiate the <sdctravel.com> domain name from the mark.  Moreover, the addition of the generic top-level domain “.com” is a functional element and is not a distinguishing difference.  In sum, the Domain Name is confusingly similar to Complainant’s SDC mark pursuant to Policy ¶ 4(a)(i).  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

Respondent makes much of its argument that, because it is located in Canada and Complainant is in the U.S., the two companies are not direct competitors and therefore confusion between them is not likely.  The argument is unpersuasive.  The two companies provide similar services, to similar customers, via similar web sites located at similar domain names.  Both of them serve the North American travel market.  Canada is not so remote from the United States that these target customer pools would not overlap.  Indeed, Complainant has many Canadian customers.  Moreover, the fact that Respondent happens to maintain a Canadian address seems to have little to do with the geographic origin of its customers or of its travel partners from whom its services are sourced, some of which are in the U.S.

 

Rights or Legitimate Interests

 

Respondent lacks rights or legitimate interests in the Domain Name.  As an initial matter, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).

 

Complainant asserts that it is not aware of any evidence to indicate that Respondent is commonly known by the disputed domain name.  A review of Respondent’s WHOIS registration information indicates that the registrant of the Domain Name is “SCMedia.”  The choice of a corporate name similar to Complainant’s strikes the Panel as unlikely to be a coincidence; but in any event the addition of the “d” to that name, thereby incorporating Complainant’s mark, is unsupported by any plausible argument for rights or legitimate interests.  In sum, the evidence indicates that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant claims that Respondent is using the disputed Domain Name to redirect Internet users to competing travel websites, including a direct competitor of Complainant known as “Right Connections Travel.”  The Panel agrees that Respondent appears to be diverting Internet users to competing websites, which does not constitute 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).

 

Registration and Use in Bad Faith

 

The similarity not only of the domain names but of the corporate names and of the design of the web sites themselves suggests a deliberate intent to copy and to trade on Complainant’s goodwill.

 

Respondent’s use of the Domain Name to divert Internet users to its competing business suggests that Respondent registered the disputed domain name in order to disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). 

 

The Panel also finds that Respondent registered and is using the Domain Name in bad faith according to Policy ¶ 4(b)(iv).  Complainant claims that Respondent’s diversion of Internet users to competing websites is for Respondent’s own commercial gain, which appears to be the case given the similarity of services provided.  Such use violates Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also The Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

 

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 <sdctravel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Michael Albert, Panelist
Dated: June 7, 2007

 

 

 

 

 

 

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