Cablexpress Corporation v. 1800CableExpress
Claim Number: FA1006001327523
Complainant is Cablexpress
Corporation (“Complainant”), represented by Philip I. Frankel, of Bond, Schoeneck & King, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <1800cableexpress.com>, registered with GoDaddy.com, 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 June 1, 2010.
On June 2, 2010, GoDaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <1800cableexpress.com> domain name is registered with GoDaddy.com, Inc and that Respondent is the current registrant of the name. GoDaddy.com, Inc has verified that Respondent is bound by the GoDaddy.com, 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 June 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@1800cableexpress.com by e-mail. Also on June 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2010, 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <1800cableexpress.com> domain name is confusingly similar to Complainant’s CABLEXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <1800cableexpress.com> domain name.
3. Respondent registered and used the <1800cableexpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cablexpress Corporation, began operation in 1978 and has utilized its CABLEXPRESS mark since 1981 to promote its computer cables and other computer-related goods or services. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its CABLEXPRESS mark (e.g., Reg. No. 2,869,564 issued August 3, 2004).
Respondent registered the <1800cableexpress.com> domain name on August 8, 2008. The disputed domain name formerly resolved to a website that featured computer cable products that directly competed with Complainant’s similar products. After receiving Complainant’s cease-and-desist letter, Respondent removed the competing products from the website resolving from the disputed domain name.
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.
The Panel holds that Complainant has established rights in its CABLEXPRESS mark under Policy ¶ 4(a)(i), due to Complainant’s multiple trademark registrations with the USPTO for said mark (e.g., Reg. No. 2,869,564 issued August 3, 2004). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant claims Respondent’s <1800cableexpress.com> domain name is confusingly similar to Complainant’s CABLEXPRESS mark. The disputed domain name adds the letter “e,” the number “1800,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s CABLEXPRESS mark. The Panel finds that the additions of a letter, a number, and a gTLD all fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <1800cableexpress.com> domain name is confusingly similar to Complainant’s CABLEXPRESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <1800cableexpress.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <1800cableexpress.com> domain name under Policy ¶ 4(c). 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent is not commonly known by
the <1800cableexpress.com> domain name. According to Complainant, Respondent is not
authorized or licensed by Complainant to utilize the CABLEXPRESS mark in a
domain name. Moreover, Complainant
claims to have searched the USPTO, as well as the
Complainant alleges that Respondent formerly used the <1800cableexpress.com> domain name to resolve to a website selling competing computer cables. Complainant claims that after Respondent’s receipt of Complainant’s cease-and-desist letter Respondent altered the content of the resolving website. Complainant argues that Respondent removed some of the products that directly competed with Complainant, such as cable cords. However, Respondent still offers some computer-related products that directly compete with Complainant’s products. The Panel holds that Respondent’s use of the confusingly similar disputed domain name to offer products that directly compete with Complainant’s products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <1800cableexpress.com> domain name formerly resolved to a website offering cable cords that directly competed with Complainant’s cable cords. After Respondent received Complainant’s cease-and-desist letter, Respondent changed the content of the resolving website by removing many of the competing cable cords. Yet, the resolving website still features some computer-related products that compete with Complainant’s products. Internet users interested in purchasing Complainant’s cable cords and computer-related products may instead purchase similar products from Respondent, thus disrupting Complainant’s business. The Panel determines that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii), as Respondent’s use disrupts Complainant’s business. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Complainant alleges that Internet users may become confused as to Complainant’s affiliation with or sponsorship of Respondent’s <1800cableexpress.com> domain name and resolving website. The Panel determines that Respondent is attempting to profit from this confusion by selling products that compete with Complainant. The Panel finds Respondent’s use of the confusingly similar disputed domain name to attempt to profit from Internet users’ confusion constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1800cableexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 8, 2010
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