Access Resource Services, Inc. and Miss Cleo v. Individual (aka David Molle)
Claim Number: FA0106000097750
Complainant is Access Resource Services, Inc. and Miss Cleo, Fort Lauderdale , FL, USA ("Complainant") represented by Sean Moynihan, of Klein, Zelman, Rothermel & Dichter, LLP. Respondent is David Molle Individual, Delphos, OH, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <misscleosucks.com> registered with Tucows, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 28, 2001; the Forum received a hard copy of the Complaint on July 2, 2001.
On July 3, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <misscleosucks.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 1, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 2, 2001, pursuant to Complainantís request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forumís 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.
The <misscleosucks.com> domain name is confusingly similar to Complainantís MS. CLEO federally registered service mark.
Respondent has no rights or legitimate interests in the <misscleosucks.com> domain name.
Respondent registered and used the <misscleosucks.com> domain name in bad faith.
No Response was received.
Complainant is the owner of the MS. CLEO service mark, relating to Complainantís psychic services. Complainant applied for registration of its MS. CLEO mark on the Principal Register of the United States Patent and Trademark Office on October 11, 2000. Complainant has spent tens of millions of dollars promoting its MS. CLEO mark.
Respondent registered the <misscleosucks.com> domain name on April 22, 2001. Respondent created a website located at the disputed domain name which promotes, and contains advertisements for, a competing psychic service.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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
Complainant has established rights in the MS. CLEO service mark through its extensive use in commerce. It is well established that a mark does not require registration in order for a Complainant to establish rights in a mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) ("[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).
The <misscleosucks.com> domain name is confusingly similar to Complainantís MS. CLEO mark. The addition of the word "sucks," combined with the audibly indistinguishable "miss" (to replace Complainantís "MS") to the disputed domain does not escape the realm of confusing similarity. See ADT Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat Complainant's confusing similarity argument).
The Panel therefore finds that Policy ∂ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a Response in regard to this matter. It is well established, that when a Respondent fails to Respond a Panel may take all the inferences of the Complaint as true. See 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").
Furthermore, Respondentís failure to respond permits the Panel to find that Respondent has no rights or legitimate interests in respect to the <misscleosucks.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because the Respondent never submitted a response nor provided the panel with evidence to suggest otherwise).
Respondentís use of the disputed domain name, to advertise and promote competing psychic services, is not a bona fide offering of goods or services pursuant to Policy ∂ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondentís use of the disputed domain names is confusingly similar to Complainantís mark. Respondentís use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
There is no evidence, and Respondent has failed to come forward to establish that it is commonly known by the disputed domain name, pursuant to Policy ∂ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Lastly, it is not a fair use to register a domain name which is confusingly similar to a Complainantís mark, to advertise services in competition to those offered by Complainant. Furthermore, even though Respondent has registered a domain name containing the word "sucks," Respondent has failed to use the disputed domain name in
any legitimate or fair use manner. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainantís products to Respondentís site by using Complainantís mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel therefore finds that Policy ∂ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondentís registration and use of the <misscleosucks.com> domain name to promote competing psychic services, assumedly for commercial gain, by creating a likelihood of confusion with Complainantís mark is evidence of bad faith pursuant to Policy ∂ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
The Panel therefore finds that Policy ∂ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <misscleosucks.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 13, 2001
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