national arbitration forum

 

DECISION

 

Verbatim Limited and Verbatim Corporation and Mitsubishi Kagaku Media Company Ltd. v. Mike Morgan

Claim Number: FA0702000919829

 

PARTIES

Complainant is Verbatim Limited and Verbatim Corporation and Mitsubishi Kagaku Media Company Ltd. (collectively “Complainant”), represented by Stephen Bennett, of Lovells, Atlantic House, Holborn Viaduct, London EC1A 2FG, UK.  Respondent is Mike Morgan (“Respondent”), 12 Webster Place, CBS, Topsail, NF A1W 5M7, CA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <verbatin.com>, registered with ENOM, INC.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2007.

 

On February 19, 2007, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <verbatin.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 February 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2007 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@verbatin.com by e-mail.

 

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

 

On March 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <verbatin.com> domain name is confusingly similar to Complainant’s VERBATIM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <verbatin.com> domain name.

 

3.      Respondent registered and used the <verbatin.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Mitsubishi Kagaku Media Company, is the parent company of Complainant Verbatim Limited and Complainant Verbatim Corporation.  As Mitsubishi Kagaku Media Company has licensed Verbatim Limited and Verbatim Corporation to use and enforce the VERBATIM marks, these Complainants shall be referred to collectively as “Complainant” for purposes of this proceeding.  Complainant holds multiple registrations of the VERBATIM mark, including registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,101,269 registered September 5, 1978; Reg. No. 2,765,962 registered September 23, 2003), and registrations with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,553,595 registered January 5, 1996; Reg. No. 2,128,233 registered October 17, 1997).  Complainant utilizes its VERBATIM mark in connection with offering data storage media including USB sticks, CDs, CD-Rs and DVD-Rs.  Complainant has registered the <verbatim.com> domain name for use in connection with its business.

 

Respondent registered the <verbatin.com> domain name on November 27, 2005.  Respondent is using the disputed domain name to operate a website composed of links to other third-party websites.  Many of the links are to websites that offer data storage media products 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 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.

 

Identical and/or Confusingly Similar

 

Complainant holds multiple registrations of the VERBATIM mark that pre-date Respondent’s registration of the disputed domain name.  The Panel finds that Complainant has established rights in its mark 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

Respondent’s <verbatin.com> domain name is confusingly similar to Complainant’s VERBATIM mark.  The only difference between the disputed domain name and Complainant’s mark is the substitution of the letter “n” for the letter “m” at the end of the mark.  The exchange of one letter for another does not distinguish the disputed domain name from Complainant’s mark.  The resulting domain name represents a common misspelling of Complainant’s mark or a simple typographical error and is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.”). 

 

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

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights or legitimate interests in the <verbatin.com> domain name.  Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent has the opportunity to provide evidence or arguments to the Panel demonstrating its rights or legitimate interest by filing a Response.  Respondent’s failure to avail itself of the opportunity to respond suggests that Respondent lacks rights or legitimate interests in the disputed domain name.  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.”).  Despite the presumption created by Respondent’s failure to respond, the Panel will examine the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).

 

Respondent is using the <verbatin.com> domain name to redirect Internet users to Respondent’s website.  Respondent’s website features links to third-party websites, some of which offer data storage goods and services in direct competition with Complainant, including USB sticks, DVDs and DVD-RWs.  Presumably, Respondent is receiving pay-per-click referral fees when Internet users click on the links on Respondent’s website.  The Panel finds that such use does not demonstrate legitimate rights or interests in the disputed domain name as it is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Additionally, there is no available evidence that Respondent is commonly known by the <verbatin.com> domain name.  Respondent’s WHOIS registration information identifies Respondent as “Mike Morgan.”  Complainant asserts that Respondent is not affiliated with Complainant and does not have permission from Complainant to reflect Complainant’s mark in a domain name.  The Panel finds that as Respondent is not commonly known by the disputed domain name it lacks rights or legitimate interests in the disputed domain name under 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 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).  

 

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

 

Registration and Use in Bad Faith

 

This UDRP dispute is the most recent in a long line of disputes involving Respondent.  Respondent has exhibited an established pattern of registering domain names that are identical or confusingly similar in which it has no rights or legitimate and using those domain names in bad faith. See, e.g. SAFE Credit Union v. Morgan, D2006-0588 (WIPO July 18, 2006); Stanworth Dev. Ltd. v. Morgan, D2006-0230 (WIPO May 3, 2006); Ellerman Inv. Ltd. v. Morgan, D2005-1321 (WIPO Feb. 11, 2006); Cartoon Network LLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006); Minnillo v. Morgan, D2005-0183 (WIPO Sept. 27, 2005); Lloyd v. Morgan, D2004-0339 (Dec. 16, 2004).  The Panel finds that Respondent’s behavior constitutes bad faith Registration and use pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).

 

Respondent’s <verbatin.com> domain name is confusingly similar to Complainant’s VERBATIM mark.  Internet users seeking Complainant’s data storage media may mistakenly misspell or mistype Complainant’s mark and find themselves redirected to Respondent’s website.  Because Respondent’s domain name is confusingly similar to Complainant’s mark, and because Respondent’s website includes links for data storage media similar to those offered by Complainant Internet users may mistakenly believe that Respondent is affiliated with Complainant.  Respondent is profiting from this confusion, presumably collecting pay-per-click referral fees from the links located 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).

 

Not only is Respondent benefiting from the <verbatin.com> domain name, Respondent is also harming Complainant’s business.  When Internet users seeking Complainant’s data media storage goods under the VERBATIM mark misspell or mistype Complainant’s mark and are redirected to Respondent’s website, they may follow the links to competing third-party websites and do business with those websites instead of with Complainant.  This takes business away from Complainant and disrupts Complainant’s business.  The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

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

 

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 <verbatin.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  April 4, 2007

 

 

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