YourGemologist, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1411001590089
Complainant is YourGemologist, LLC (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yourgemmologist.com>, registered with Internet.bs 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2014; the National Arbitration Forum received payment on November 14, 2014.
On November 16, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <yourgemmologist.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2014 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@yourgemmologist.com. Also on November 17, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 16, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
i. Complainant owns the YOURGEMOLOGIST mark through common law rights.
1. Complainant began using the YOURGEMOLOGIST mark as early as October 22, 2000.
2. Complainant registered the domain name <yourgemologist.com> on October 22, 2000.
3. Additionally, Complainant has filed a Federal Trademark Application with the United States Patent and Trademark Office (“USPTO”) for the YOURGEMOLOGIST mark on March 21, 2014. (Serial No. 86/228,244)
ii. Complainant uses the YOURGEMOLOGIST mark in connection with providing educational information in the academic field of gemology.
i. Policy ¶ 4(a)(i)
1. The <yourgemmologist.com> domain name is confusingly similar to Complainant’s YOURGEMOLOGIST mark because Respondent has simply added another letter “m” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <yourgemmologist.com> domain name. Respondent is neither licensed nor authorized to use the YOURGEMOLOGIST mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to offer competing services to that of Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to disrupt Complainant’s business, as it uses the disputed domain name to offer competing services to that of Complainant.
2. Respondent uses the disputed domain name to attract Internet users to its own website for commercial gain.
3. Respondent had actual or constructive knowledge of Complainant’s rights in the mark, because Respondent makes personal comments about Complainant’s registered Agent Robert James.
B. Respondent
a. Respondent failed to submit a Response in this proceeding.
Complainant is YourGemologist, LLC of San Antonio, TX, USA. Complainant is the owner of common law rights in the mark YOURGEMOLOGIST which it has used continuously since at least as early as 2000 in connection with its provision of service in the nature of educational information in the academic field of gemology. Complainant has a pending application for federal registration of its mark. Complainant is also the owner of the registration for the domain name <yourgemologist.com> which it registered in 2000.
Respondent is Domain Admin / Whois Privacy Corp., Nassau, The Bahamas. Respondent’s registrar’s address is listed in the same location. Respondent registered the disputed domain name on or about April 30, 2012.
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."
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.
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.”).
Complainant uses the YOURGEMOLOGIST mark in connection with providing educational information in the academic field of gemology. Complainant claims to own the YOURGEMOLOGIST mark through common law rights. Complainant demonstrates this ownership by the fact that it has been using the mark since at least October 22, 2000, the same day it registered the <yourgemologist.com> domain name, and it has filed an application with the USPTO on March 21, 2014 (Serial No. 86/228,244). Complainant claims that such evidence illustrates that Complainant has common law rights in the YOURGEMOLOGIST mark, including evidence of the use of Complainant’s website. Complainant’s argument is supported by prior UDRP decisions. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)). The Panel finds that Complainant’s evidence of common law rights is sufficient under the present circumstances to demonstrate that it owns the YOURGEMOLOGIST mark pursuant to Policy ¶ 4(a)(i) requirements.
Complainant argues that the <yourgemmologist.com> domain name is confusingly similar to Complainant’s YOURGEMOLOGIST mark because Respondent has simply added another letter “m” to the mark. The Panel notes that the disputed domain name also differs from Complainant’s mark by the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have found that a domain name differing from a mark by a single letter does not escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. 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 Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel here finds that the <yourgemmologist.com> domain name is confusingly similar to Complainant’s YOURGEMOLOGIST mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the, <yourgemmologist.com> domain name. The Panel notes that the WHOIS information identifies “Domain Admin” as the registrant of the disputed domain name. Further, Complainant asserts that Respondent is neither licensed nor authorized to use the YOURGEMOLOGIST mark. The Panel again notes that Respondent has failed to submit a response to rebut any of Complainant’s contentions. Given the lack of evidence to the contrary, the Panel finds that Respondent is not commonly known by the <yourgemmologist.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent currently uses the disputed domain name to offer competing services to that of Complainant. Prior panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to offer competing services to that of the complainant. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel here finds that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent uses the disputed domain name to disrupt Complainant’s business. Complainant maintains that Respondent uses the disputed domain name to offer competing services to that of Complainant. Complainant believes that such behavior qualifies as a disruption of its business and is evidence of bad faith under Policy ¶ 4(b)(iii). Previous panels have agreed with this position. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent’s competing use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent uses the disputed domain name to intentionally divert Internet users away from Complainant’s website to Respondent’s website for Respondent’s own commercial gain. Previous panels have found evidence of bad faith when the respondent acts in such a way. 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)). The Panel here finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <yourgemmologist.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 30, 2014
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