Taylor Corporation v. Virtual Sky
Claim Number: FA0704000956484
Complainant is Taylor Corporation (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett,
P.A., 500 IDS Center,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lableworks.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 12, 2007.
On April 11, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <lableworks.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@lableworks.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 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lableworks.com> domain name is confusingly similar to Complainant’s LABEL WORKS mark.
2. Respondent does not have any rights or legitimate interests in the <lableworks.com> domain name.
3. Respondent registered and used the <lableworks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Taylor Corporation, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LABEL WORKS mark (i.e. Reg. No. 1,968,973 issued April 16, 1996 and Reg. No. 2,617,628 issued September 10, 2002). Complainant has used the LABEL WORKS mark in connection with the sale of printing services, specifically the printing of custom labels. Complainant has registered the <labelworks.com> domain name, which it uses in connection with its sale of printing goods and services.
Respondent registered the <lableworks.com> domain name on July 16, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which displays a search engine and links to third-party websites offering goods and services in competition with Complainant’s goods and services under the LABEL WORKS mark.
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 established rights in the LABEL WORKS mark through registration with the USPTO. 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 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.”).
Respondent’s <lableworks.com>
domain name is confusingly similar to Complainant’s LABEL WORKS mark in that it
uses the mark in its entirety and simply misspells the word “label” by
transposing the last two letters of the word.
The Panel finds that the transposition of two letters of the mark does
not sufficiently distinguish Respondent’s domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See 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”); see also Pier 1
Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to the complainant's PIER 1 mark).
Respondent has also added the generic top-level domain (“gTLD) “.com” to Complainant’s mark. Panels have previously held that the addition of a gTLD is irrelevant to the determination of whether a domain name is identical or confusingly similar to a mark under policy ¶ 4(a)(i). 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <lableworks.com> domain name. Complainant’s submission establishes a prima facie case which shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel assumes that Respondent does not have rights or legitimate interests here because Respondent has failed to respond to the Complaint. See 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); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will review all available evidence in determining whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is using the <lableworks.com> domain name to
redirect Internet users to Respondent’s website displaying a search engine and
links to third-party websites offering goods and services in competition with
Complainant. Respondent’s use of the
domain name to display a search engine and links to competing websites is not a
use in connection with a bona fide offering of goods and services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see
also Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1,
2003) (finding that the respondent was not using the domain name for a bona
fide offering of goods or services or a legitimate noncommercial or fair
use because it was diverting Internet users to a search engine with pop-up
advertisements).
Additionally, Respondent offers no evidence, and no evidence is present in the record, to indicate that Respondent is commonly known by the <lableworks.com> domain name. Respondent’s WHOIS information identifies Respondent as “Virtual Sky.” Therefore, Respondent has failed to establish rights or legitimate interests in the <lableworks.com> domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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 Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has registered and is using the <lableworks.com> domain name, which is confusingly similar to Complainant’s LABEL WORKS mark, in order to redirect Internet users to Respondent’s website displaying a search engine and links to competing websites. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under 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 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)).
Respondent is using the <lableworks.com> domain name to redirect Internet users to Respondent’s website that displays a search engine and links to competing websites for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s LABEL WORKS mark, Internet users may become confused as to Complainant’s affiliation with the website. Presumably, Respondent is profiting from this confusion through click-through fees. As a result, Respondent’s use of the <lableworks.com> domain name to redirect Internet users to third-party websites offering competing goods and services constitutes 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 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 <lableworks.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 23, 2007
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