national arbitration forum

 

DECISION

 

Tandy Leather Company, Inc. v. Kentech, Inc. a/k/a Spiral Matrix a/k/a Domain Master

Claim Number:  FA0605000701183

 

PARTIES

Complainant is Tandy Leather Company, Inc. (“Complainant”), represented by Stephen D. Lawrence of Loe, Warren, Rosenfield, Kaitcer, Hibbs & Windsor, P.C., P.O. Box 100609, Fort Worth, TX, 76185-0609.  Respondent is Kentech, Inc. a/k/a Spiral Matrix a/k/a Domain Master (“Respondent”), 1st Floor Muya House, Kenyatta Ave., PO Box 4276-30100, Eldoret, Rift Valley, 30100, KE.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tandyleather.info> and <tandyleather.org>, registered with Intercosmos Media Group, Inc. and Domain Contender, LLC, respectively.

 

PANEL

The undersigned certifies that she 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically May 4, 2006; the National Arbitration Forum received a hard copy of the Complaint May 8, 2006.

 

On May 4, 2006, Intercosmos Media Group, Inc. confirmed by e-mail to the National Arbitration Forum that the <tandyleather.info> domain name is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. verified that Respondent is bound by the Intercosmos Media Group, Inc. 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 May 4, 2006, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <tandyleather.org> domain name is registered with Domain Contender, LLC and that Respondent is the current registrant of the name.  Domain Contender, LLC verified that Respondent is bound by the Domain Contender, 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 May 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 31, 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@tandyleather.info and postmaster@tandyleather.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 2, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The disputed domain names that Respondent registered, <tandyleather.info> and <tandyleather.org>, are confusingly similar to Complainant’s TANDY LEATHER COMPANY mark.

 

2.      Respondent has no rights to or legitimate interests in the <tandyleather.info> and <tandyleather.org> domain names.

 

3.      Respondent registered and used the <tandyleather.info> and <tandyleather.org> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Tandy Leather Company, Inc., and its predecessors have operated a retail leathercraft business since 1919, and Complainant has widely used its trademark, TANDY LEATHER COMPANY since at least 1948.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TANDY LEATHER COMPANY mark (Reg. No. 1,023,963 issued October 28, 1975).

 

Respondent registered the <tandyleather.info> domain name March 3, 2006, and the <tandyleather.org> domain name February 1, 2006.  Respondent’s disputed domain names resolve to websites featuring links to third-party websites that offer goods and services in direct competition with Complainant.  

 

DISCUSSION

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 the Panel 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 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.

 

Identical to and/or Confusingly Similar

 

Complainant offered extrinsic evidence in this proceeding to establish that it has legal rights to the mark contained within the two disputed domain names.  The Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the TANDY LEATHER COMPANY mark.  See 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.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

The Panel finds that the disputed domain names that Respondent registered, <tandyleather.info> and <tandyleather.org>, are confusingly similar to Complainant’s TANDY LEATHER COMPANY mark pursuant to Policy ¶ 4(a)(i).  The disputed domain names, <tandyleather.info> and <tandyleather.org>, are confusingly similar to Complainant’s mark because the domain names omit the term “company” and add the generic top-level domain “.info” and “.org.”  In WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), the panel found the <westjets.com> domain name confusingly similar to the complainant’s mark, where the complainant held the WEST JET AIR CENTER mark.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).  Similarly, in this case the Panel finds that Respondent’s alterations to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of the disputed domain names pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).    

 

Rights to or Legitimate Interests

 

Complainant initially must establish that it has rights to and/or legitimate interests in the mark contained within a domain name and that the Respondent lacks such rights to or legitimate interests with respect to the disputed domain names.  However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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”).

 

Complainant asserts that Respondent is not authorized to use Complainant’s TANEY LEATHER COMPANY mark, and that Respondent is not associated with Complainant in any way.  Furthermore, on the face of the record, Respondent’s WHOIS information does not suggest that Respondent is commonly known by any of the disputed domain names.  In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the Panel found that the respondent did not have rights in a domain name where the respondent was not known by the mark.  See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).  Furthermore, in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the Panel found that given the WHOIS contact information for the disputed domain name, the Panel could infer that the respondent was not commonly known by the name ‘welsfargo’ in any derivation.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 

 

The evidence on record indicates that Respondent is using the disputed domain names to operate websites providing links to third-party websites that offer goods and services in direct competition with Complainant’s business.  In Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the Panel found that the respondent was neither 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 domain names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks.  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).  Therefore, in the present case, the Panel finds that Respondent’s use of Complainant’s TANEY LEATHER COMPANY mark in the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant alleged that Respondent acted in bad faith by registering and using domain names that contain the dominant features of Complainant’s registered mark without Complainant’s authorization.  Respondent is using the <tandyleather.info> and <tandyleather.org> domain names to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites.  The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See 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 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).”). 

 

Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to a website offering links to competing goods and services.  Respondent’s domain names incorporating the dominant features of Complainant’s mark are capable of creating confusion as to Complainant’s affiliation with the disputed domain names and resulting website.  Thus, Respondent’s use of the <tandyleather.info> and <tandyleather.org> domain names is equivalent to 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).         

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii). 

 

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 <tandyleather.info> and <tandyleather.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: June 16, 2006.

 

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