American Type Culture Collection v.
Michele Dinoia a/k/a SZK.com
Claim
Number: FA0501000410110
Complainant is American Type Culture Collection (“Complainant”),
represented by Carla C. Calcagno, of Rothwell, Figg, Ernst and Manbeck, 1425 K Street NW, Suite 800, Washington, DC 20005. Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), represented by Valerio Donnini, 4 Via
Venezia, Pescara, PE 65121, Italy.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <atcc.com>, registered with Onlinenic,
Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 28, 2005.
On
February 1, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <atcc.com> is registered
with Onlinenic, Inc. and that Respondent is the current registrant of the name.
Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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
February 3, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 2005 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@atcc.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 4, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <atcc.com>
domain name is identical to Complainant’s ATCC mark.
2. Respondent does not have any rights or
legitimate interests in the <atcc.com> domain name.
3. Respondent registered and used the <atcc.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Type Culture Collection, is a famous, non-profit organization that
engages in the manufacture and sale of microorganisms, cell lines and other
standard biological materials throughout the United States and the world. Due to the high quality of its cell lines,
the United States government and many professional organizations have
recommended the use of the microorganisms manufactured and sold by Complainant
for official quality control assays and tests.
Additionally, the United States government and other governments have
designated Complainant as the authorized depository for various cell
lines. Complainant operates a website
at the <atcc.org> domain name.
Complainant has
registered the ATCC mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. Nos. 843,320 issued January 13, 1970; 1,276,595 issued May 8,
1984; 2,273,963 issued August 31, 1999; 2,273,965 issued August 31, 1999;
2,273,974 issued August 31, 1999; 2,307,067 issued January 11, 2000). Due to its prominence in the field,
Complainant’s ATCC mark has acquired great fame and distinction in the
international scientific community.
Respondent
registered the <atcc.com> domain name on April 29, 2002. Respondent’s domain name resolves to a
website featuring links to competing cell lines producers.
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.
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
established rights in the ATCC mark through registration of the mark with the
USPTO. See Janus Int’l Holding
Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption; see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark.
Respondent’s <atcc.com> domain name is identical to
Complainant’s ATCC mark. The mere
addition of the generic top-level domain “.com” is insufficient to distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of the Complaint to
be deemed true; see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <atcc.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name; see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <atcc.com> domain name, which is identical to
Complainant’s ATCC mark, to operate a website featuring links to competing cell
line producers. Such use 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 pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services; see also Winmark Corp. v. In The Zone,
FA 128652 (Nat. Arb. Forum Dec. 6, 2002) finding that Respondent had no rights
or legitimate interests in a domain name that used Complainant’s mark to
redirect Internet users to a competitor’s website.
Furthermore,
nothing in the records indicates that Respondent is either commonly known by
the <atcc.com> domain name or is authorized to register domain
names featuring Complainant’s ATCC mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the 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; see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant is
using the <atcc.com> domain name, which is identical to
Complainant’s ATCC mark, to operate a website featuring links to competing cell
line producers. Such use constitutes
disruption and is evidence that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
finding that the minor degree of variation from Complainant's marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant's business; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business.
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to the competing websites.
Since Respondent is using a domain name which is identical to
Complainant’s mark, consumers searching for Complainant online who access
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus,
Respondent’s commercial use of the <atcc.com> domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Reuters Ltd. v. Global Net
2000, Inc., D2000-0441 (WIPO July 13, 2000) finding bad faith where
Respondent attracted users to a website sponsored by Respondent and created
confusion with Complainant’s mark as to the source, sponsorship, or affiliation
of that website; see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Furthermore,
Respondent registered the <atcc.com> domain name with actual or
constructive knowledge of Complainant’s ATCC mark due to Complainant’s
registration of the mark with the USPTO and the international renown that
Complainant’s mark has acquired.
Moreover, the Panel finds that Respondent had actual knowledge of
Complainant’s rights in the mark due to the obvious connection between
Complainant and the content featured on Respondent’s website. Thus, the Panel finds that Respondent
registered and used the <atcc.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) finding that because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”.
The Panel finds
that 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 <atcc.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 11, 2005
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