Lastar, Inc. v. Michele Dinoia c/o
SZK.com
Claim
Number: FA0502000430793
Complainant is Lastar, Inc. (“Complainant”),
represented by Michael G. Frey, of Dinsmore and Shohl LLP,
One Dayton Centre, One South Main Street, Suite 1300, Dayton, OH 45402. Respondent is Michele Dinoia c/o SZK.com (“Respondent”), Via Trilussa
11, Pineto TE Italy 64025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cabletogo.com>, registered with Onlinenic,
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 28, 2005.
On
February 28, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <cabletogo.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
March 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 24, 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@cabletogo.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 31, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <cabletogo.com>
domain name is confusingly similar to Complainant’s CABLES TO GO mark.
2. Respondent does not have any rights or
legitimate interests in the <cabletogo.com> domain name.
3. Respondent registered and used the <cabletogo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Lastar, Inc., has used its CABLES TO GO mark in connection with a wide variety
of cables and connectivity products for computers and other electronic products
including but not limited to computer cables, electrical cables, network
cables, fiber optic cables and power cables.
Complainant also uses the mark in connection with custom cable
manufacturing services as well as telephone, mail order, catalog and online
sales services involving cables and other connectivity products. Complainant markets its products and
services under the CABLES TO GO mark to both the general public and to original
equipment manufacturers in the United States and throughout the world. Complainant has been using the CABLES TO GO
mark continuously in connection with its cable business since as early as 1984.
Complainant has
a pending trademark application with the United States Patent and Trademark
Office (Ser. No. 76,407,549, filed May 14, 2002). Complainant has also been involved in a successful opposition
proceeding before the Trademark Trial and Appeal Board (Opposition No. 91151637)
where Complainant opposed registration of another company’s GOCABLES mark on
the basis of its rights in the CABLES TO GO mark. The Board, in sustaining the opposition, concluded that
Complainant owned protectable rights in the CABLES TO GO mark, due to its use
in commerce for approximately twenty years.
Respondent
registered the <cabletogo.com> domain name on August 18,
2002. Respondent is using the disputed
domain name to divert Internet traffic from Complainant’s website to a website
containing a search engine, which highlights cable resources on the net. The website includes a list of search
categories as well as a list of popular search terms. Some of the categories are relevant to Complainant’s business,
including Desktop PCs, Cross Over Cable and Lap Tops. When Internauts click on any of these or other search terms or
categories, they are redirected to a list of “sponsored links.”
Respondent has
also registered domain names containing marks belonging to third parties such
as <wwwfootlocker.com>, <wwwnetscape.net> and <foxmoviechannel.com>.
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 that it has rights in the CABLES TO GO mark through continuous use
of the mark in commerce in connection with its cable business for over twenty
years. Additionally, Complainant has a
pending trademark application for the CABLES TO GO mark with the United States
Patent and Trademark Office. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does
not require that a trademark be registered by a governmental authority for such
rights to exist.”); see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also Fishtech
v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the
complainant had common law rights in the mark FISHTECH, which it had used since
1982).
Respondent’s <cabletogo.com>
domain name is confusingly similar to Complainant’s CABLES TO GO mark because
the domain name merely omits the letter “s” from Complainant’s mark. Minor typographical omissions such as a
missing letter, do not negate the confusing similarity of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by Complainant); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to Complainant’s STATE
FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark).
Additionally, the
addition of the top-level domain “.com” does not sufficiently distinguish the
disputed domain name from Complainant’s CABLES TO GO mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that "the addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <cabletogo.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, it is assumed that Respondent
lacks rights and legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the respondent”);
see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by Complainant that Respondent has no
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. 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.”); see also 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 Desotec N.V. v. Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent is
using the disputed domain name to redirect Internet users to a search engine
website highlighting cable resources on the Internet. When Internauts click on any of these or other search terms or
categories, they are redirected to a list of “sponsored links.” The Panel infers that Respondent receives
click-through fees through the use of these sponsored links at the disputed
domain name. Thus, Respondent’s use of
the <cabletogo.com> domain name is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name).
Furthermore,
Respondent lacks rights and legitimate interests in the <cabletogo.com>
domain name because Respondent has not presented any evidence, and there is no
proof in the record suggesting that Respondent is commonly known by the
disputed domain name. Additionally,
nothing in the WHOIS domain name registration information suggests that
Respondent is commonly known by the domain name. Furthermore, Complainant did not authorize Respondent to use the
mark. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
wholly appropriating Complainant’s mark to lead Internet users to a search
engine website where Respondent presumably earns click through fees. The Panel finds that Respondent is
intentionally creating a likelihood of confusion to attract Internet users for
Respondent’s commercial gain, pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Moreover,
Respondent’s pattern of registering domain names containing marks belonging to
third parties such as <wwwfootlocker.com>, <wwwnetscape.net> and
<foxmoviechannel.com> in addition to Respondent’s involvement in prior
domain name disputes is further evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(ii). See
CDs-2-Go, Inc. v. Dinoia, FA 203202 (Nat. Arb. Forum Dec. 5, 2003); see
also Lowermybills.com, Inc. v. Dinoia, FA 183728 (Nat. Arb. Forum Oct. 2,
2003); see also Carlson Companies, Inc. v. Dinoia, FA 161568 (Nat. Arb.
Forum July 23, 2003); see also Vivid Video, Inc. v. Dinoia, FA 155465
(Nat. Arb. Forum May 27, 2003); see also Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous
registration of domain names such as <pillsbury.net>,
<schlitz.net>, <biltmore.net> and <honeywell.net> and
subsequent registration of the disputed <Marlboro.com> domain name
evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see
also Pep Boys Manny, Moe, & Jack
v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that,
where Respondent registered many domain names, held them hostage, and prevented
the owners from using them, the behavior constituted bad faith); see also Australian Stock Exch. v. Cmty. Internet
(Australia), D2000-1384 (WIPO Nov. 30,
2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered
multiple infringing domain names containing the trademarks or service
marks of other widely known Australian businesses).
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 <cabletogo.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 13, 2005
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