John B. Lucivero v. Domain Administrator
Claim Number: FA0610000828320
Complainant is John B. Lucivero (“Complainant”), 9 Squantum Rd., Paxton, MA, 01612. Respondent is Domain Administrator (“Respondent”), 624 Lakeshore Road E., Toronto, ON, M8W3M3, Canada.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <miraclebath.com>, registered with Moniker Online Services, Inc.
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 October 26, 2006; the National Arbitration Forum received a hard copy of the Complaint October 26, 2006.
On October 26, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <miraclebath.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, 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 November 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 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@miraclebath.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 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, <miraclebath.com>, is identical to Complainant’s MIRACLE BATH mark.
2. Respondent has no rights to or legitimate interests in the <miraclebath.com> domain name.
3. Respondent registered and used the <miraclebath.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John B. Lucivero, operates under the MIRACLE BATH mark and has done so for at least six years as shown by a Verizon Yellow Pages advertisement.
It is unclear from the Complaint when Respondent registered the <miraclebath.com> domain name, although the disputed domain name was created June 22, 2004. The disputed domain name resolves to a website featuring links to bath-related goods and services potentially in competition with Complainant. Respondent has also offered to sell the disputed domain name to Complainant for $1,000.
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.
The Policy recognizes that common law rights are sufficient
to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica 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 British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy “does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks.”).
Complainant established common law rights in the MIRACLE
BATH mark through use of the mark for six years as evidenced by Yellow Pages
advertisements including the MIRCALE BATH mark. The Panel finds that Complainant established common law rights in
the MIRCALE BATH mark pursuant to Policy ¶ 4(a)(i). See 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 S.A. Bendheim Co., Inc. v. Hollander
Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the
complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark).
The disputed domain name, <miraclebath.com>,
is identical to Complainant’s MIRCALE BATH mark. The disputed domain name includes Complainant’s mark in its
entirety without alteration and adds the generic top-level domain “.com.” All domain names require the addition of a
top-level domain, which precludes a top-level domain from distinguishing a
disputed domain name from a mark. The
Panel finds that the disputed domain name is identical to Complainant’s
mark. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Sporty's Farm L.L.C. vs.
Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied,
530 U.S. 1262 (2000), ("For consumers to buy things or gather information
on the Internet, they need an easy way to find particular companies or brand
names. The most common method of locating an unknown domain name is simply to
type in the company name or logo with the suffix .com.").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established using extrinsic proof in this proceeding that it has common law rights in the mark contained in its entirety within the disputed domain name. Complainant’s submission asserts that Respondent lacks such rights to and legitimate interests in the disputed domain name. This establishes a prima facie case pursuant to the Policy. The establishment of a prima facie case shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(i).
In addition to being somewhat sparse overall, Complainant’s Complaint included some specific discrepancies regarding how Respondent became the registrant of the disputed domain name. Complainant asserts that it has established common law rights in the MIRACLE BATH mark through use of the mark in commerce since 2000, and offers six years of Yellow Pages advertisements as evidence of those rights. However, those Yellow Pages advertisements include the disputed <miraclebath.com> domain name suggesting to the Panel that Complainant was originally the registrant of the disputed domain name. Moreover, Complainant offers no account of when or how the registration of the disputed domain name transferred to Respondent. Respondent’s failure to submit a Response suggests to the Panel that although Respondent may have been able to show such rights or legitimate interests in the disputed domain name, Respondent elected not to pursue the matter in this proceeding.
Reviewing the available evidence to determine whether
Respondent has rights to or legitimate interests as contemplated by Policy ¶
4(c), the Panel finds no support for such rights. See 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).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is using the disputed domain name to operate a
website featuring links to third-party websites that seek to compete in the
same commercial area that Complainant serves.
Presumably, Respondent is receiving pay-per-click fees from the linked
websites. Also, Respondent has offered
to sell the disputed domain name to Complainant for $1,000. The Panel finds that such use is not a bona
fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), and
it is not a legitimate noncommercial or fair use as contemplated by Policy ¶
4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4,
2003) (“Respondent’s lack of rights and legitimate interests in the domain name
is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”).
No available evidence suggests that Respondent is commonly
known by the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Domain
Administrator,” a name with no apparent relationship to the disputed domain
name. The Panel finds that Complainant
is not commonly known by the disputed domain name as contemplated by Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also 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.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent registered and used the
domain name containing Complainant’s protected mark in bad faith. Complainant makes allegations that
Respondent attempted to sell the disputed domain name to Complainant for
$1,000. The evidence in support of this
claim does not permit the Panel to make findings in Complainant’s favor. However, as a general rule, an attempt to
sell a disputed domain name to the rightful holder of the mark for a price that
would be in excess of expected out-of-pocket costs to register a name supports
findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed
domain name registration for sale establishes that the domain name was registered
in bad faith under Policy ¶ 4(b)(i).”); see also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated
bad faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name).
However, Respondent is using the
disputed domain name, which is identical to Complainant’s mark, to attract
Internet users to Respondent’s website.
Internet users seeking information about Complainant may instead find
themselves at Respondent’s website; and because the disputed domain name is
identical to Complainant’s mark, misdirected Internet users may mistakenly
believe that Respondent’s website is affiliated with Complainant. Respondent presumably profits from this confusion
by collecting pay-per-click fees from the links featured on Respondent’s
website. The Panel finds that such use
is evidence of bad faith registration and use pursuant to Policy 4(b)(iv). See 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.’”); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
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 <miraclebath.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 15, 2006.
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