National Services Group, Inc. v. E-Media
Group
Claim Number: FA0508000531625
Complainant is National Services Group, Inc. (“Complainant”),
represented by Amanda J. McLaughlin,
of Goodman Law Group PC, 695 Town
Center Drive, 14th Floor, Costa Mesa, CA 92626. Respondent is E-Media
Group (“Respondent”), 1516 E. Tropicana Ave., Suite 238, Las Vegas, NV
89119.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <collegework.com>,
registered with Intercosmos Media Group.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 8, 2005.
On
August 5, 2005, Intercosmos Media Group confirmed by e-mail to the National
Arbitration Forum that the <collegework.com>
domain name is registered with Intercosmos Media Group and that Respondent is
the current registrant of the name. Intercosmos
Media Group has verified that Respondent is bound by the Intercosmos Media
Group 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
August 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 31, 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@collegework.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 7, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Judge Harold Kalina (Ret.)
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 <collegework.com> domain name is confusingly similar to
Complainant’s COLLEGE WORKS mark.
2. Respondent does not have any rights or
legitimate interests in the <collegework.com>
domain name.
3. Respondent registered and used the <collegework.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
National Services Group, Inc., began using its COLLEGE WORKS mark in connection
with its painting services business in 1997.
Complainant has extensively advertised its business under the COLLEGE
WORKS mark through the use of exterior signs at painting sites, brochures,
flyers, door hangers, banners, news media coverage and its website located at
<collegeworks.com>.
Respondent
registered the <collegework.com>
domain name on January 7, 1999.
Respondent is using the disputed domain name to redirect Internet users
to its commercial website featuring adult-oriented content.
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. 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.”).
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’s
COLLEGE WORKS mark has acquired secondary meaning through Complainant’s
continuous use and aggressive promotion of the mark in commerce since 1997 in
connection with Complainant’s painting services business. Thus, Complainant has established common law
rights in the COLLEGE WORKS mark. See SeekAm. Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant’s trademark or service mark be registered by a government authority
or agency 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n
account of long and substantial use of the said name [<keppelbank.com>]
in connection with its banking business, it has acquired rights under the
common law).
Respondent’s <collegework.com>
domain name is confusingly similar to Complainant’s COLLEGE WORKS mark because
the domain name omits the space between the terms “college” and “works” and
omits the letter “s” from the term “works.”
Moreover, the domain name adds the generic top-level domain “.com” to
the mark. The Panel finds that such
minor alterations to Complainant’s mark are insufficient to negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). 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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum
Nov. 18, 2000) (finding that, by misspelling words and adding letters to words,
a respondent does not create a distinct mark but nevertheless renders the
domain name confusingly similar to the complainant’s marks); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <collegework.com> domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond 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 respondent does not have 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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the disputed domain name to redirect Internet users to adult-oriented
websites. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
COLLEGE WORKS mark to redirect Internet users to adult-oriented websites is not
a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that “use of the disputed
domain name in connection with pornographic images and links tarnishes and
dilutes [Complainant’s mark]” and is evidence that the respondent has no rights
or legitimate interests in the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat.
Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting
Internet traffic to an adult oriented website, containing images of scantily
clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services
or a noncommercial or fair use); see also
McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June
2, 2003) (holding that the use of domain
names to divert Internet users to a website that features pornographic
material, has been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use).
Additionally,
the fact that Respondent’s <collegework.com>
domain name is merely a typosquatted variation of Complainant’s COLLEGE WORKS
mark is further evidence that Respondent does not have rights or legitimate
interests in the <collegework.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See LTD Commodities LLC v.
Party Night, Inc., FA 165155 (Nat.
Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com> and <ltdcommodaties.com> disputed domain
names were typosquatted versions of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names."); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding
that the respondent lacked rights or legitimate interests in the disputed
domain names because it "engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter 'x' instead of the letter 'c.'").
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <collegework.com> domain name. Thus, Respondent has not established rights or legitimate
interests in the <collegework.com>
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 the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that Respondent’s use of a domain name that omits a letter in Complainant’s COLLEGE WORKS mark constitutes
typosquatting and evidences Respondent’s bad faith registration and use of the <collegework.com> domain name
pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini,
FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent registered
and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶
4(a)(iii) because the name was merely a typosquatted version of the
complainant’s ZONEALARM mark.).
Moreover,
Respondent’s use of the <collegework.com>
domain name to redirect Internet users to an adult-oriented website taints
Complainant’s mark and is evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (finding that the respondent’s tarnishing use
of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (“Whatever the motivation of Respondent, the
diversion of the domain name to a pornographic site is itself certainly
consistent with the finding that the Domain Name was registered and is being
used in bad faith.”).
Furthermore,
Respondent is using the disputed domain name to operate a commercial
adult-oriented website. The Panel finds
that Respondent is capitalizing on the confusing similarity between the domain
name and Complainant’s mark, which is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
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 <collegework.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
September 21, 2005
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