Concept:Synergy, Inc. v. Michele Dinoia
Claim
Number: FA0504000464514
Complainant is Concept:Synergy, Inc. (“Complainant”), represented
by Preeti Narayan of Meister Seelig & Fein LLP, 140 East 45th Street, 19th Floor, New York, NY, 10017. Respondent is Michele Dinoia (“Respondent”), Via Trilussa 11, Pineto, TE 64025,
Italy.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <conceptsynergy.com>, registered with Tuonome.It
Srl.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint April
22, 2005.
On
April 19, 2005, Tuonome.It Srl confirmed by e-mail to the National Arbitration
Forum that the domain name <conceptsynergy.com> is registered with
Tuonome.It Srl and that Respondent is the current registrant of the name. Tuonome.It Srl verified that Respondent is
bound by the Tuonome.It Srl registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 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@conceptsynergy.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
May 19, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <conceptsynergy.com>, is identical to Complainant’s
CONCEPT: SYNERGY mark.
2. Respondent has no rights to or legitimate
interests in the <conceptsynergy.com> domain name.
3. Respondent registered and used the <conceptsynergy.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Concept:Synergy, Inc., was formed by Jach
Pursel in 1988 in association with his products and services related to
Complainant’s new age philosophy, known as Lazaris. Complainant’s products and services include books, audio and
video tapes, compact discs, computer software programs, calendars, seminars and
conferences.
Complainant holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for its CONCEPT: SYNERGY mark (Reg. No.
2,165,107 issued June 16, 1998).
Complainant’s first use of the mark in commerce was in December 1987.
Respondent
registered the <conceptsynergy.com> domain name March 8, 2004,
nearly six years after Complainant obtained trademark rights in its CONCEPT:
SYNERGY mark. Respondent is using the
disputed domain name to resolve to a website that displays a generic search
engine as well as links to websites for various products and services unrelated
to Complainant. Furthermore, Respondent
has been a party to numerous UDRP proceedings in which it has been determined
that Respondent has engaged in cybersquatting
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has presumptive
rights in the CONCEPT: SYNERGY mark through registration with the USPTO. Since Respondent has not submitted a
response to rebut Complainant’s prima facie case of rights, the Panel
finds that Complainant has rights in the CONCEPT: SYNERGY mark for purposes of
Policy ¶ 4(a)(i). See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also 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).
The <conceptsynergy.com>
domain name registered by Respondent differs from Complainant’s CONCEPT:
SYNERGY mark only with the omission of a colon and the addition of the generic
top-level domain (“gTLD”) “.com.” It
has been widely held under the Policy that the omission of punctuation marks or
the addition of a gTLD to a complainant’s registered mark is insignificant to a
determination under Policy ¶ 4(a)(i).
This is particularly true where the specific punctuation mark is
impermissible in domain names, such as the colon in this instance. Therefore, the Panel determines that the domain
name is identical to Complainant’s mark.
See Chernow Communications,
Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or
absence of punctuation marks, such as hyphens, does not alter the fact that a
name is identical to a 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").
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
established its rights and interests in the mark contained in the disputed
domain name. Complainant alleges that
Respondent has no such rights.
Respondent’s failure to submit a response to the allegations of the
Complaint entitles the Panel to accept all reasonable allegations and
inferences in the Complaint as true unless clearly contradicted by the
evidence. 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 Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a response a panel is free to make inferences from the very failure
to respond and assign greater weight to certain circumstances than it might
otherwise do).
Complainant
asserts that Respondent has no rights or legitimate interests in the <conceptsynergy.com>
domain name that is identical to Complainant’s CONCEPT: SYNERGY mark. Complainant has made a prima facie case in support of its allegations, which shifts the
burden to Respondent to make a showing that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
However, Respondent failed to respond to Complainant’s allegations or
provide evidence of rights or legitimate interests. Respondent has, therefore, failed to meet its burden and the
Panel concludes that Respondent lacks rights and legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that, once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to that respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); 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 a complainant that a respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to that respondent to demonstrate that such rights or legitimate
interests do exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise).
Complainant
contends that Respondent is using the <conceptsynergy.com> domain
name to divert Internet users who may be searching for Complainant’s CONCEPT:
SYNERGY products and services to a website sponsored by Respondent that
features a generic search engine and displays links for various products and
services unrelated to Complainant.
Furthermore, Complainant claims that Respondent generates revenue by
diverting traffic to its website and linking Internet users to third-party
websites. The Panel finds that
Respondent’s practice of diverting Complainant’s potential consumers to
Respondent’s website, presumably for Respondent’s benefit, is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). Additionally,
Respondent’s use does not constitute a noncommercial or fair use under Policy ¶
4(c)(iii). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to websites
unrelated to Complainant’s mark, websites where Respondent presumably receives
a referral fee for each misdirected Internet user, was not a bona fide offering
of goods or services as contemplated by the Policy); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
Respondent’s diversionary use of Complainant’s mark to attract Internet users
to its own website, which contained a series of hyperlinks to unrelated websites,
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that Respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name).
Complainant
argues that it has not licensed or permitted Respondent to use its CONCEPT:
SYNERGY mark in any way and that Respondent, as an individual or business, has
never been commonly known by the <conceptsynergy.com> domain
name. Due to Respondent’s failure to
file a response, the Panel has not been provided with any evidence to refute
Complainant’s contentions. Thus, it is
the Panel’s determination that Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights
in the mark precede Respondent’s registration; (3) Respondent is not commonly
known by the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering of goods or services or for a legitimate noncommercial or fair
use).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
attempts to profit from its use of the <conceptsynergy.com> domain
name by intentionally attracting Internet users interested in Complainant’s
CONCEPT: SYNERGY products and services through consumer confusion. The Panel concludes that Respondent profits
from these intentional diversions through click-through fees generated by
redirecting Internet users to the third-party websites linked through
Respondent’s website. Thus, the Panel
finds that Respondent’s attempts to divert Internet users for commercial gain
by attracting them to its own website through a likelihood of confusion with
Complainant’s mark is evidence of bad faith registration and use 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).
Complainant
provided evidence that Respondent has engaged in a pattern of registering
domain names reflecting the marks of numerous trademark holders in order to
prevent the owners from registering those domain names. See Geoffrey, Inc. v. Dinoia,
FA 104089 (Nat. Arb. Forum Feb. 25, 2002) (transferring Respondent’s
registration of the <kidsrus.com> domain name to the complainant); see
also Venator Group Regail Inc. v. Dinoia, FA 101506 (Nat. Arb. Forum Dec.
10, 2001); see also Anheuser-Busch, Inc. v. Dinoia, FA 114465 (Nat. Arb.
Forum July 15, 2002) (involving Respondent’s registration of the
<anheuserbusch.com> domain name).
In this case, Respondent has registered a domain name that is identical
to Complainant’s mark, which certainly prevents Complainant from registering
the domain name which most corresponds to its CONCEPT: SYNERGY mark. The Panel finds that Respondent registered
the <conceptsynergy.com> domain name to prevent Complainant from
reflecting its mark in a corresponding domain name and Respondent has engaged
in a pattern of such preventative conduct involving other trademark
owners. Thus, this behavior constitutes
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See 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 Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad
faith pattern of conduct where Respondent registered many domain names
unrelated to its business which infringe on famous marks and websites); see
also Encyclopaedia Britannica Inc. v.
Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent
engaged in the practice of registering domain names containing the trademarks
of others).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <conceptsynergy.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 2, 2005
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