Bell Globemedia Publishing Inc. v.
Michele Dinoia a/k/a SZK.com
Claim
Number: FA0505000473834
Complainant is Bell Globemedia Publishing Inc. (“Complainant”),
represented by Lisa Martz, of McCarthy Tetrault LLP,
1300-777 Dunsmuir Street, Vancouver, BC, V7Y 1K2, Canada. Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), Via Trilussa
11, Pineto, TE, Italy 64025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <globemail.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 10, 2005.
On
May 10, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <globemail.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
May 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 2, 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@globemail.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
June 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <globemail.com>
domain name is confusingly similar to Complainant’s THE GLOBE AND MAIL mark.
2. Respondent does not have any rights or
legitimate interests in the <globemail.com> domain name.
3. Respondent registered and used the <globemail.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bell Globemedia Publishing Inc., is the owner and publisher of THE GLOBE AND
MAIL newspaper, Canada’s largest nationally-distributed newspaper.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the THE GLOBE AND MAIL mark (Reg. No. 1,658,189 issued September 24,
1991). Complainant also holds a
trademark registration with the Canadian trademark authority (Reg. No. TMA
210,954 issued November 23, 1936).
Respondent
registered the <globemail.com> domain name on September 13,
2001. Respondent is using the disputed
domain name to redirect Internet users to its commercial website featuring
links to various categories, including “Business,” “Cars,” “Education,”
“Entertainment,” “Finances,” “Health,” and “Homes.”
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 in this proceeding that it has rights in the THE GLOBE AND MAIL
mark through registration with the United States Patent and Trademark Office
and by continuous use in commerce. 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. The respondent has the
burden of refuting this assumption.).
The
domain name registered by Respondent, <globemail.com>, is
confusingly similar to Complainant’s mark because the disputed domain name
incorporates the dominant features of Complainant’s mark, omits the spaces
between the words in the mark and omits the words “the” and “and” from the
mark. These omissions do not
sufficiently differentiate the domain name from the mark pursuant to Policy ¶
4(a)(i) because Complainant’s mark continues to be the dominant element of
Respondent’s domain name. See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Croatia Airlines
v. Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the <croatiaairlines.com> domain name is
identical to the complainant's CROATIA AIRLINES trademark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the <asprey.com> domain name was confusingly similar to the
complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Maple Leaf Sports & Entm’t Ltd. v.
Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the
<leafs.org> domain name was confusingly similar to the complainant’s
marks, where the complainant held many trademarks that contained the term
“LEAFS”).
Additionally,
Respondent’s <globemail.com> domain name is confusingly similar to
Complainant’s THE GLOBE AND MAIL mark because the domain name incorporates the
dominant feature of Complainant’s mark and deviates with the addition of the
generic top-level domain “.com.” The
addition of a generic top-level domain does not negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27,
2002) (finding it is a “well
established principle that generic top-level domains are irrelevant when conducting
a Policy ¶ 4(a)(i) analysis”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <globemail.com>
domain name, which includes the dominant features of Complainant’s THE GLOBE
AND MAIL mark. When Complainant has
made a prima facie case in support of its allegations, the burden shifts
to Respondent to show that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). Because
Respondent has not responded to the Complaint, the Panel assumes that
Respondent does not have rights or 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
the complainant has asserted that the respondent does not have rights or
legitimate interests with respect to the domain name it is incumbent on the
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 Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
respondents’ failure to respond can be construed as an admission that they do
not have rights or legitimate interests in the domain names).
Complainant made
the prima facie showing and Respondent failed to respond. Therefore, the Panel is entitled to accept
all reasonable allegations and inferences in the Complaint as true. 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 Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the
respondent’s failure to respond: (1) The respondent does not deny the facts
asserted by complainant, and (2) The respondent does not deny conclusions which
complainant asserts can be drawn from the facts).
Nothing in the
record establishes that Respondent is commonly known by the <globemail.com>
domain name. Respondent is not licensed
or authorized to register or use a domain name that incorporates Complainant’s
mark. Therefore, the Panel concludes
that Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. 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
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the mark
precede the respondent’s registration; (3) the respondent is not commonly known
by the domain name in question).
Additionally,
the <globemail.com> domain name is confusingly similar to
Complainant’s THE GLOBE AND MAIL mark and is used to redirect Internet users to
a website advertising links for a wide variety of third-party services and
products. The Panel finds that
Respondent’s use of the domain name that is confusingly similar to
Complainant’s mark to divert Internet users to a website that links to third-party
websites and for which Complainant presumably receives click-through fees is
not 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 Disney Enters., Inc.
v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
the respondent’s diversionary use of the 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 the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the
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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates Complainant’s THE
GLOBE AND MAIL mark for Respondent’s commercial gain. Respondent registered and used the <globemail.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential customers from Complainant to
Respondent’s website by taking advantage of Internet users who are searching under
Complainant’s THE GLOBE AND MAIL mark and diverting them to Respondent’s
commercial website. See 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 the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Moreover,
Respondent registered the <globemail.com> domain name with actual
or constructive knowledge of Complainant’s rights in the THE GLOBE AND MAIL
mark due to Complainant’s registration of the mark with the United States
Patent and Trademark Office.
Registration of a domain name that is confusingly similar to a mark,
despite actual or constructive knowledge of another’s rights in the mark, is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
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.”).
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 <globemail.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 21, 2005
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