Blackwood Assets Inc. v. Domain Admin
Claim Number: FA0512000615304
Complainant is Blackwood Assets, Inc. (“Complainant”), represented by Emily J. Barnhart, of Blank Rome LLP, One Logan Square, Philadelphia, PA 19103. Respondent is Domain Admin (“Respondent”), General Deliver False, West Bay, Granc Cayman WB, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <acmoorecrafts.com>, registered with Stargate Holdings Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2005.
On December 27, 2005, Stargate Holdings Corp. confirmed by e-mail to the National Arbitration Forum that the <acmoorecrafts.com> domain name is registered with Stargate Holdings Corp. and that Respondent is the current registrant of the name. Stargate Holdings Corp. has verified that Respondent is bound by the Stargate Holdings Corp. 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 January 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2006 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@acmoorecrafts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <acmoorecrafts.com> domain name is confusingly similar to Complainant’s A.C.MOORE mark.
2. Respondent does not have any rights or legitimate interests in the <acmoorecrafts.com> domain name.
3. Respondent registered and used the <acmoorecrafts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blackwood Assets Inc., is the owner of the
A.C.MOORE mark, which it licenses exclusively to its affiliate, A.C. Moore,
Inc. A.C. Moore was founded in 1985 and
uses the mark in connection with its operation of retail stores that offer
craft classes and sell arts, crafts and floral supplies.
Complainant has registered the A.C.MOORE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,210,537 issued December 15, 1998)
Respondent registered the <acmoorecrafts.com> domain name on November 27, 2005. The disputed domain name resolves to a website that displays links to numerous third-party services, including gambling websites and some of Complainant’s competitors.
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. 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 registered its A.C.MOORE mark with the USPTO
and has provided evidence of its registration.
The Panel finds that this satisfies the requirement of establishing
Complainant’s rights pursuant to Policy ¶ 4(a)(i). 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.”).
The <acmoorecrafts.com> domain name incorporates Complainant’s A.C.MOORE mark, omitting the periods after “a” and “c.” In addition, the domain name adds the common or descriptive term “crafts,” which is clearly related to Complainant’s business in the operation of arts and crafts stores. These changes do not alter the fact that Complainant’s mark is the dominant portion of the domain name and that the domain name is confusingly similar to Complainant’s mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant argues that Respondent cannot show that it has ever been commonly known by the <acmoorecrafts.com> domain name. There is nothing in the record that suggests that Respondent is commonly known by the disputed domain name, and Respondent has not come forward with any evidence to rebut Complainant’s contentions. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to 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).
The website associated with the <acmoorecrafts.com> domain name displays links to a variety of third-party businesses, including gambling websites, presumably so that Respondent may earn click-through fees for connecting Internet users to these third-party businesses through Respondent’s website. Such use of a domain name confusingly similar to Complainant’s A.C.MOORE mark to profit from click-through fees is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).”).
Consequently, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
By using Complainant’s A.C.MOORE mark to operate a directory website through which Respondent likely derives profit, Respondent is attempting to benefit from the goodwill associated with Complainant’s mark. Internet users searching for Complainant’s products and services under the A.C.MOORE mark may become confused upon reaching Respondent’s website with links to third-party products and services. Respondent’s registration and use of a confusingly similar domain name evidences 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 G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Thus, the Panel finds that Complainant has satisfied 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 <acmoorecrafts.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 15, 2006
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