PrintingForLess.com, Inc. v. Koolprint
Claim Number: FA0512000616730
Complainant is PrintingForLess.com, Inc. (“Complainant”), 6750 West Loop South, Suite 690, Bellaire, TX, 77401. Respondent is Koolprint (“Respondent”), 6750 West Loop South, Suite 690, Bellaire, TX, 77401.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <printingfor-less.com>, registered with Omnis Network, Llc.
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 December 29, 2005; the National Arbitration Forum received a hard copy of the Complaint January 3, 2006.
On December 29, 2005, Omnis Network, Llc confirmed by e-mail to the National Arbitration Forum that the <printingfor-less.com> domain name is registered with Omnis Network, Llc and that Respondent is the current registrant of the name. Omnis Network, Llc verified that Respondent is bound by the Omnis Network, Llc 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 January 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 26, 2006, 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@printingfor-less.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 1, 2006, 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, <printingfor-less.com>, is confusingly similar to Complainant’s PRINTINGFORLESS.COM mark.
2. Respondent has no rights to or legitimate interests in the <printingfor-less.com> domain name.
3. Respondent registered and used the <printingfor-less.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PrintingForLess.com, Inc., offers commercial printing services to individuals and businesses throughout the world. Complainant offers its services under the PRINTINGFORLESS.COM mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,322,620 issued February 22, 2000).
Respondent registered the <printingfor-less.com> domain name November 28, 2004. Respondent is using the disputed domain name to divert Internet users to Respondent’s competing website at the <koolprint.com> domain name.
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 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 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 registered its PRINTINGFORLESS.COM
mark with the USPTO. Complainant’s
evidence of registration shows that Complainant established rights in the mark
before Respondent registered the domain name.
The Panel finds that this satisfies the requirement of establishing
Complainant’s rights pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <printingfor-less.com> domain name incorporates Complainant’s PRINTINGFORLESS.COM mark in its entirety and deviates from the mark only with the addition of a hyphen. Respondent’s use of a hyphen within the domain name does not distinguish the domain name from Complainant’s registered mark. Therefore, the Panel finds that the domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the complainant’s registered mark is confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name. Complainant has the initial burden under Policy ¶4(a)(ii) to prove that it has rights and that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <printingfor-less.com> domain name and also that Respondent is not in any way affiliated with Complainant. The Panel finds nothing in the record to contradict Complainant’s assertions. Therefore, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ The WHOIS domain name registration information establishes on its face that Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant contends that Respondent is using the <printingfor-less.com> domain name to divert Internet users to Respondent’s website for printing services. Respondent’s use of a domain name nearly identical to Complainant’s PRINTINGFORLESS.COM mark to mislead Internet users searching for Complainant’s printing services and divert them to Respondent’s competing website is not a use in connection with 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith. Complainant offers commercial printing services under its PRINTINGFORLESS.COM mark. Respondent is using the confusingly similar <printingfor-less.com> domain name to offer its own competing commercial printing services. This constitutes evidence that Respondent, a competitor of Complainant, is using the domain name primarily to disrupt Complainant’s business by redirecting Complainant’s potential customers to Respondent’s competing website. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site).
Respondent is attempting to benefit from the goodwill Complainant acquired in its PRINTINGFORLESS.COM mark by using the confusingly similar <printingfor-less.com> domain name to divert Internet users searching for Complainant’s products and services to Respondent’s competing website. Upon reaching Respondent’s competing website, Internet users may become confused as to Complainant’s association with the website. Respondent’s attempts to derive commercial benefit for its business by registering a domain name confusingly similar to the mark of its competitor is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Complainant 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 <printingfor-less.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 15, 2006.
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