National Arbitration Forum

DECISION

Value Marketing, Inc. v. Karlo Volak

Claim Number: FA0602000649735

PARTIES

Complainant is Value Marketing, Inc. (“Complainant”), represented by Gordon E.R. Troy, of Gordon E. R. Troy PC, PO Box 368, Charlotte, VT 05445. Respondent is Karlo Volak (“Respondent”), Teodosij Sinaitski 10 B, Skopje, Skopje 1000, MK.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metabospeed.info>, registered with In2net Network Inc., A British Columbia Corporation.

PANEL

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 Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2006.

On February 24, 2006, In2net Network Inc., A British Columbia Corporation confirmed by e-mail to the National Arbitration Forum that the <metabospeed.info> domain name is registered with In2net Network Inc., A British Columbia Corporation and that the Respondent is the current registrant of the name. In2net Network Inc., A British Columbia Corporation has verified that Respondent is bound by the In2net Network Inc., A British Columbia Corporation 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 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 28, 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@metabospeed.info by e-mail.

A Response was received and determined to be complete on April 3, 2006. However, the Response was received after the deadline for response, and not in hard copy. Therefore, the Forum does not consider this Response to be in compliance with ICANN Rule #5(a). An Additional Submission from Respondent was received by the Forum on April 4, 2006, but without the required fee (Supplemental Rule #7).

On April 4, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant is the registered owner of United States Trademark Registration No. 2,976,229 for METABO SPEED XXX. The mark was first used in commerce on January 3, 2004; the mark application was filed on June 25, 2004, and the registration was issued on July 26, 2005. Respondent has registered the disputed domain name for the obvious purpose of causing consumer confusion and directing people searching on the web looking to find Complainant’s METABO SPEED product, and falsely diverting such sales to itself.

2. The <metabospeed.info> domain name, which was registered on December 4, 2004, is identical and confusingly similar in all material respects to Complainant’s METABO SPEED XXX mark. (Policy ¶ 4(a)(i)).

3. Respondent is using the disputed domain name to advertise and sell METABO-SPEED XXX. The bottle design of the product is identical in all respects to the bottle design of Complainant. Respondent is attempting to pass off his products as those of Complainant when in fact, Respondent is not selling Complainant’s products.

4. Respondent has no rights or a legitimate interest in the disputed domain name. (Policy ¶ 4(a)(ii)).

5. Respondent first registered the <metabospeed.info> domain name on December 4, 2004, nearly a year after Complainant began selling products bearing its METABO SPEED XXX trademark, and more than five months after Complainant filed its application in the United States Patent and Trademark Office for its mark.

6. Complainant’s METABO SPEED XXX product has been highly successful in the marketplace. Sales of Complainant’s products are made predominantly through its website and on-line advertising. It sells its products directly and through authorized distributors.

7. Respondent is without authorization, association or affiliation holding himself out to be a seller of what appears to be an identical product to that of Complainant.

8. Respondent did not adopt the disputed domain name in connection with a bona fide offering of either goods or services, but rather he is offering products bearing Complainant’s registered trademark. Respondent is not commonly known by the domain name adopted. Finally, not only is there not a legitimate noncommercial or fair use of the domain name, but rather there is a clear commercial use of the disputed domain name that fully incorporates Complainant’s trademark to sell competing products bearing Complainant’s trademark but which are not those of Complainant.

9. Respondent registered and is using the disputed domain name in bad faith. (Policy ¶ 4(a)(iii)).

10. On several occasions, e-mails were sent to the Respondent notifying the Respondent that the adoption and use of the disputed domain name was a violation of Complainant’s rights. No response has ever been received by Complainant to any of those communications.

11. The adoption, registration and use of the disputed domain name is clearly being done to disrupt Complainant’s business. In particular, when reviewing the Respondent’s website, it is clear that Respondent is attempting to unlawfully divert business away from Complainant by using a domain name which fully incorporates that of Complainant’s trademark, but also proceeds to offer for sale goods bearing Complainant’s trademark causing confusion and mistake in the mind of the consumer. When a consumer is searching on the Internet for METABO SPEED, they will naturally believe that when they arrive at the <metabospeed.info> domain name, they have found what they are searching for – METABO SPEED. However, the disputed website does not sell Complainant’s product, even though Respondent has gone to great lengths to make its site look like it does, and he has copied all aspects of Complainant’s product packaging so that a consumer will automatically assume they have arrived at a distributor of Complainant, when in fact they have not.

12. The products offered by the Respondent on the disputed domain website are protected by Complainant’s trademark. Complainant has no knowledge as to where Respondent acquires its products, but it is clear from the nearly identical product packaging that Respondent is selling competitive products which appear to be those of Complainant. Finally, as Respondent is not a legitimate wholesaler of genuine Complainant products, it is without authorization to use the disputed domain name or Complainant’s trademark to sell products.

13. Accordingly, the evidence of such use by Respondent clearly demonstrates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the products sold thereon.

B. Respondent

1. Respondent observed several years ago through an affiliate network at the <adserve.com> domain name the existence of the <nutritionaloutlet.com> domain name, which, among the other products, had Complainant’s METABO SPEED XXX product offered for promotion and was paying $15.00 / piece. Respondent, accordingly, tried to promote METABO SPEED XXX that was listed as a product in the portfolio of the same company.

2. Respondent’s disputed <metabospeed.info> domain name was purposefully registered in order for Respondent to be able to promote METABO SPEED XXX which was promoted through <nutritionaloutlet.com> (at the time when it still existed as a sponsor). Since it ceased to function as Respondent’s sponsor, his domain was left the way it was before.

3. Contrary to Complainant’s assertion, Respondent endeavored to communicate with Complainant concerning the promotion of the product but received only ambiguous replies.

4. It was not Respondent’s intent to endanger a mark, and this is why he registered the <metabospeed.info> domain name and not the <metabospeedxxx> domain name. The domain names are not identical or confusingly similar.

5. Respondent had no knowledge of the existence of Complainant at the time the disputed domain name was registered.

6. There is and was no intent on the part of Respondent to mislead consumers. He will not mention Complainant’s product on his website, and he will seek to become part of an affiliate program.

C. Additional Submissions

1. Respondent has made an additional submission which contained an e-mail from Respondent to Complainant seeking affiliation.

FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

There is a procedural issue which first must be considered.

Respondent’s Response was deficient in that it was not received by the response deadline and was received in electronic form only. Moreover, Respondent’s Additional Submission was not accompanied by the required fee. The Panelist nevertheless will consider the Response and the Additional Submission. See Strum v. Nordic Net. Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21. 2002) (finding that ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process); see also Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made).

Identical and/or Confusingly Similar

Respondent first appears to base his defense on his view that the disputed domain name is not identical or confusingly similar to Complainant’s mark.

As to this issue, Respondent simply is wrong, and the requirement of Policy ¶ 4(a)(i) has been satisfied.

Complainant established rights in its METABO SPEED XXX mark through use and registration of the mark since 2004. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

Respondent’s <metabospeed.info> domain name is obviously confusingly similar to Complainant’s METABO SPEED XXX mark, because it does incorporate the dominant features of Complainant’s mark and merely omits the letters “XXX.” Such minor alterations to Complainant’s registered mark do not sufficiently differentiate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Networ, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to complainant’s WELLNESS INTERNATIONAL NETWORK).

Rights or Legitimate Interests

Because the application for Complainant’s mark was made with the United States Patent and Trademark Office before Respondent acquired the disputed domain name, Respondent would have rights and a legitimate interest in the domain name only if its registration and use of the domain name was not in bad faith.

We turn to the critical issue of “bad faith” registration and use.

Registration and Use in Bad Faith

This is a close call.

This is because Respondent claims that at the time he registered the disputed domain name, he, in fact, was an affiliate of the <adservice.com> domain name, which itself was affiliated with the <nutritionaloutlet.com> domain name, which had promoted the product METABO SPEED XXX. Thus,

he asserts, his registration and use of the disputed domain name were in good faith.

Moreover, it is evident that Respondent has endeavored to communicate with Complainant to affiliate with it without a satisfactory result.

On the other hand, it appears that the product promoted by Respondent is not the same as Complainant’s although the name and bottle design are identical. This, indeed, if true, clearly evidences bad faith registration and use.

The determination of credibility is difficult without live testimony and the opportunity for cross-examination.

We, however, do not have to resolve the issue subjectively, for there is an applicable objective alternative.

Section 4(b) of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4(b) provides:

[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website location.

The words “source, sponsorship, affiliation, or endorsement” are particularly apt here. Inevitably, the Panelist believes that consumers would conclude that the domain name in issue was endorsed and sponsored by Complainant.

Moreover, there is a legal presumption of bad faith, when, Respondent was or reasonably should have been aware of Complainant’s application for a trademark, as here. This is “constructive bad faith,” and it does not mean that such a Respondent, as here, actually had bad faith intent. It is the responsibility of one seeking to protect a domain name to conduct a thorough search of trademarks and domain names before his selection of the domain name. See Pink, The Internet & E-Commerce Legal Handbook (2001) 211-212.

In Interstellar Starship Services, Ltd. v. Epix, Inc., 184 F.3d 1107, 1111 (9th Cir. 1999), it was said:

However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <metabospeed.info> domain name be TRANSFERRED from Respondent to Complainant.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: April 25, 2006

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