United Service Organizations, Inc. v. Little Pie's Enterprise
Claim Number: FA0604000671275
Complainant is United Service Organizations, Inc. (“Complainant”), represented by Keith A. Barritt, of Fish & Richardson P.C., 1425 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is Little Pie's Enterprise (“Respondent”), 227 19th Avenue, Paterson, NJ 07504.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usoentertainmentcompany.com>, registered with Dotster.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2006.
On April 13, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <usoentertainmentcompany.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 April 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 4, 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@usoentertainmentcompany.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <usoentertainmentcompany.com> domain name is confusingly similar to Complainant’s USO mark.
2. Respondent does not have any rights or legitimate interests in the <usoentertainmentcompany.com> domain name.
3. Respondent registered and used the <usoentertainmentcompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Service Organizations, Inc., is a non-profit organization chartered by the United States Congress to provide support and welfare services to members of the United States armed forces and their families. Complainant uses the USO mark to offer travel, tourism and entertainment services, including well-publicized wartime tours of celebrities. Complainant has more than 120 centers around the world, including 73 centers in the United States. American military personnel and their families visit Complainant’s centers more than five million times each year.
Complainant has registered the USO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 703,682 issued August 30, 1960; Reg. No. 1,731,688 issued November 10, 1992). The United States Congress has also enacted a statute, 36 U.S.C. § 220106, giving Complainant the exclusive right to use the USO mark regardless of the goods and services offered under the mark.
Respondent registered the <usoentertainmentcompany.com> domain name on January 17, 2006 and is using the disputed domain name to operate a website providing travel and entertainment information.
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 has demonstrated rights in the USO mark pursuant
to a federal statute, 36 U.S.C. § 220106, and by registration of the mark with
the USPTO. See Am. Nat’l Red Cross v. Universal Translator,
Inc., FA 237440 (Nat. Arb. Forum Mar. 31, 2004) (“Complainant has
established rights in the RED CROSS mark through evidence of wide use of the
mark in commerce, through evidence of acts of Congress protecting that mark,
and through registration of the mark on the Principal Register of the U.S.
Patent and Trademark Office.”); 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.”).
Respondent’s <usoentertainmentcompany.com> domain name is confusingly similar to Complainant’s USO mark, because it wholly incorporates Complainant’s registered mark and merely adds the common terms “entertainment” and “company,” which describe Complainant’s services. Previous panels have held that domain names wholly incorporating Complainant’s USO mark are not sufficiently distinguishable by simply adding a common term to the mark. See United Serv. Orgs., Inc. v. TTA Panama, FA 543473 (Nat. Arb. Forum Sept. 29, 2005) (finding the <usosandiego.com> domain name confusingly similar to Complainant’s USO mark); see also United Serv. Orgs., Inc. v. Moore, FA 543451 (Nat. Arb. Forum Sept. 27, 2005) (finding the <uso-european-region.org> and <uso-hawaii.org> domain names, among others, confusingly similar to the USO mark); see also United Serv. Orgs., Inc. v. Walker, FA 543463 (Nat. Arb. Forum Sept. 30, 2005) (finding the <usorome.com>, <usoparis.com>, <usonaples.com> and <usodubai.com> domain names confusingly similar to the USO mark). Therefore, Respondent’s <usoentertainmentcompany.com> domain name is confusingly similar to Complainant’s USO mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <usoentertainmentcompany.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to the
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <usoentertainmentcompany.com>
domain name. See 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 have no legitimate
interest in the domain names); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Because the WHOIS information lists “Little Pie’s
Enterprise” as the registrant of the disputed domain name, and there is no
other evidence in the record suggesting that Respondent is commonly known by
the <usoentertainmentcompany.com> domain name, the Panel finds
that Respondent has not established rights or legitimate interests in the <usoentertainmentcompany.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no
rights or legitimate interests in domain names because it is not commonly known
by the complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a
legitimate noncommercial or fair use).
Furthermore, Respondent’s <usoentertainmentcompany.com> domain name, which includes Complainant’s USO mark, resolves to a website providing travel and entertainment information in direct competition with Complainant. In DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002), the panel determined that the respondent’s use of the <dlj.com> domain name to divert Internet users to the <visual.com> domain name, where services that competed with the complainant were advertised, was 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). Because Respondent is also diverting Internet users to a website offering services that compete with Complainant, Respondent has not demonstrated that it is using the <usoentertainmentcompany.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because a federal statute governs Complainant’s rights in the USO mark, Respondent’s registration of the <usoentertainmentcompany.com> domain name alone provides evidence of bad faith registration and use. In Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003), the panel held that when both parties to a proceeding are residents of the United States and a federal statute protects the mark, the Panel can conclude that the domain name was registered and used in bad faith. In this case, Complainant is a resident of the United States, the WHOIS information indicates that Respondent is a resident of New Jersey, and 36 U.S.C. § 220106 grants Complainant exclusive rights to use the USO mark. Therefore, Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Int'l Olympic Comm. v. Ritchey, FA 128817 (Nat. Arb. Forum Jan. 20, 2003) (finding that the respondent's registration was done in violation of a federal statute, and as such was held to be ipso facto bad faith); see also Am. Nat’l Red Cross v. Universal Translator, Inc., FA 237440 (Nat. Arb. Forum Mar. 31, 2004) (“18 U.S.C. §§ 706 and 917 alone permit the inference that the domain names were registered and used in bad faith, and Respondent has not come forward with any evidence rebutting this presumption.”).
Moreover, Respondent’s use of the <usoentertainmentcompany.com> domain name to operate a website offering services that compete with Complainant indicates that it is attempting to take advantage of the confusing similarity between the disputed domain name and Complainant’s USO mark in order to profit from the goodwill associated with the mark. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is diverting Internet users seeking Complainant’s travel and entertainment services to a competing website for its own commercial gain, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Furthermore, by registering a domain name confusingly
similar to Complainant’s USO mark and using it to operate a website providing
competing travel and entertainment services, Respondent has registered the
domain name for the purpose of disrupting Complainant’s business. Such use of the disputed domain name to
divert and disrupt Complainant’s business constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
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 <usoentertainmentcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 22, 2006
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