DECISION

 

Oly Holigan, L.P. v. Damir Kruzicevic

Claim Number: FA0106000097353

 

PARTIES

Complainant is Oly Holigan, L.P., Dallas, TX, USA (“Complainant”) represented by Stephen L. Sapp, of Locke Liddell & Sapp LLP.  Respondent is Damir Kruzicevic, (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "michealholigan.com" registered with Register.com.

 

PANEL

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. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 4, 2001.

 

On June 4, 2001, Register.com confirmed by e-mail to the Forum that the domain name "michealholigan.com" is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 June 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 2001 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@michealholigan.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carolyn Marks Johnson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 urges the following:

[a.]       Respondent’s domain name, “Michealholigan.com,” is identical to and/or  confusingly similar to the Holigan marks, including Michaelholigan.com.”  Rule 3(b)(ix)(1); Policy ¶ 4(a)(i)).

 

            [b.]       Respondent has no rights to or legitimate interests in “Michealholigan.com.”

            (Rule 3(b)(ix)(2); Policy ¶ ¶ 4(a)(ii) and 4(c))

 

[c.]       Respondent has registered and used “Michealholigan.com.” in bad faith

            (Rule 3(b)(ix)(3); Policy ¶ ¶ 4(a)(iii) and 4(b))

 

B. Respondent has not filed any response.

 

FINDINGS

            Complainant owns the following trademarks:

            (1)        MICHAELHOLIGAN.COM, U.S. common law trademark and registered domain name of Holigan (registered May 6, 1997) used in association with Holigan’s website since at least as early as May 6, 1997.

 

            (2)        MICHAELHOLIGAN.COM, U.K. Reg. No. 2220199, registered July 7, 2000, for use with “publications and printed matter, namely, magazines, pamphlets and product brochures in the field of residential homes and residential housing construction,” in International Class 16; and “franchise services, namely, offering technical assistance in establishing, operating, marketing, and developing franchised businesses that offer, construct, and sell residential homes and manufactured residential housing by means of customary advertising of the services and by means of a global computer network,” in International Class 35;

 

            (3)        MICHAEL HOLIGAN.COM NOBODY KNOWS HOMES LIKE HOLIGAN & DESIGN, U.S. Application Serial No. 75/758,686, filed July 23, 1999, published August 15, 2000, for use with “publications and printed matter, namely, magazines, pamphlets and product brochures in the field of residential homes and residential housing construction,” in International Class 16;

 

            (4)        MICHAEL HOLIGAN.COM NOBODY KNOWS HOMES LIKE HOLIGAN & DESIGN, U.S. Application Serial No. 75/758,799, filed July 23, 1999, allowed October 31, 2000, for use with “franchise services, namely, offering technical assistance in establishing, operating, marketing, and developing franchised businesses that offer, construct, and sell residential homes, through consultation and by means of a global computer network,” in International Class 35;

 

            (5)        MICHAEL HOLIGAN HOMES, U.K. Reg. No. 2220195, registered August 4, 2000, for use with “publications and printed matter, namely, magazines, pamphlets and product brochures in the field of residential homes and residential housing construction,” in International Class 16; and “franchise services, namely, offering technical assistance in establishing, operating, marketing, and developing franchised businesses that offer, construct, and sell residential homes and manufactured residential housing by means of customary advertising of the services and by means of a global computer network,” in International Class 35;

 

            (6)        MICHAEL HOLIGAN’S YOUR NEW HOUSE & DESIGN, U.S. Reg. No. 2,226,008, registered February 23, 1999, for use with a “television program in the field of real estate and residential construction,” in International Class 41;

 

            (7)        MICHAEL HOLIGAN’S YOUR NEW HOUSE & DESIGN, U.S. Reg. No. 2,268,525, registered August 10, 1999, for use with “providing multiple user access to a web site on a global computer information network for access to products and services related to construction of homes, manufactured housing, printed materials, namely, magazines and television programming related to same,” in International Class 42;

 

            (8)        MICHAEL HOLIGAN HOMES, U.S. Reg. No. 2,287,717, registered October 19, 1999, for use with services in International Class 37, namely, “construction of homes”;

 

            (9)        MICHAEL HOLIGAN HOMES & DESIGN, U.S. Reg. No. 2,272,279, registered August 24, 1999, for use with “building construction and repair,” in International Class 37;

 

            (10)      MICHAEL HOLIGAN’S YOUR NEW HOUSE & DESIGN, U.S. Reg. No. 2,318,257, registered February 15, 2000, for use with a “television program in the field of real estate and residential construction,” in International Class 41.

 

Complainant is also the owner of several pending trademark applications in various countries worldwide including the United States, the United Kingdom, Mexico, Canada and Korea, for marks which include the distinctive and dominant component “MICHAEL HOLIGAN.”

 

Due to such promotion and the extent and duration of Complainant’s exclusive use of the Holigan Marks, such marks are widely recognized within the United States and certain foreign countries as trade and business identifiers of Complainant and its associated goods and services.

 

Complainant first became aware of Respondent’s use of its domain name on or about February 2001.  At that time, Respondent was using its domain name to redirect consumers to the commercial web site, “BESTOFTHEWEB.COM,” an Internet directory linking to a variety of sites featuring the goods and services of others.  While the commercial relationship between Respondent and the website to which the domain name is currently pointed has not been clarified, it can be assumed that Respondent is deriving financial benefits from the situation either by directing Internet users to the relevant site or by commercial arrangements with third parties owning websites to which the portal is presently linked.

 

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 is the owner of U.K. Reg. No. 2220199 for the trademark and service mark,  “MICHAELHOLIGAN.COM,” registered July 7, 2000, and is thereby the owner of exclusive rights to use of the mark in the U.K. for those goods and services.  Complainant is also the owner of the domain name and U.S. common law service mark, “MICHAELHOLIGAN.COM,” which has been used exclusively and continuously by Complainant since at least as early as May 6, 1997.  Moreover, Complainant is the owner of two pending U.S. applications for  “MICHAELHOLIGAN.COM NOBODY KNOWS HOMES LIKE HOLIGAN & DESIGN.”  As such, Complainant has adopted and developed substantial rights and goodwill in the Holigan marks, which marks are used in connection with Complainant’s products, services and web sites.

 

Respondent’s domain name, "michealholigan.com," and Complainant’s marks for “MICHAELHOLIGAN.COM,” are distinguishable only by noting Respondent’s juxtaposition of the letters “AE” to “EA” in the word “MICHAEL.”  Therefore, Respondent’s domain name and Complainant’s previously identified marks are confusingly similar.  See Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's Pier 1 mark).  Moreover, Respondent’s domain name is confusingly similar to the remaining Holigan marks by virtue of the fact that Respondent’s domain name is substantially identical to the name, “MICHAEL HOLIGAN,” which mark is the dominant and distinctive component of Complainant’s family of Holigan Marks.

 

For these reasons, the Panel concludes that Complainant has satisfied the burden set forth in Policy ¶ 4(a)(i) to show that it has rights in the mark contained within the domain name and that the domain name is confusingly similar to Complainant’s mark.

 

Rights to or Legitimate Interests

Complainant has established its rights to the mark contained within the domain name registered by Respondent.  The Policy provides that certain circumstances, as set forth in Paragraph 4(c), shall demonstrate a domain name holder’s rights or legitimate interests to the domain name. Respondent cannot and did not demonstrate any of the circumstances identified in Policy ¶ 4(c).

 

Rather than making bona fide use, Respondent has been using its domain name to deceive consumers by redirecting Complainant's consumers and potential consumers to a commercial web site, which is not affiliated with Complainant.  Respondent is further leading consumers to believe that such a site is somehow affiliated with, or otherwise sponsored or approved by Complainant.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).  Consequently, Respondent cannot demonstrate that it has been using the domain name “in connection with a bona fide offering of goods or services.”  Policy ¶ 4(c)(i).

 

Nor can Respondent demonstrate that it has been commonly known by the domain name.  Policy ¶ 4(c)(ii).  The Respondent, since registering the domain name, has not demonstrated that it is associated with the domain name in any shape or form.  There is no evidence that Respondent is commonly known or associated by the domain name.  See Great Southern Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name “greatsouthernwood.com” where Respondent linked the domain name to <bestoftheweb.com>).

 

Furthermore, the Respondent cannot demonstrate that it is making a legitimate noncommercial or fair use of the domain name since, as discussed above, Respondent is in fact making a commercial and unfair use of the domain name.  Policy ¶ 4(c)(iii). Respondent’s commercial use of the domain name is evidenced by the fact that it is being used to redirect consumers to commercial web sites of its affiliates.

 

For these reasons, the Panel finds that Complainant satisfied the burden set forth in Policy ¶ 4(a)(ii) to show that Complainant has rights to and legitimate interests in the mark contained within the domain name registered by Respondent and that Respondent does not have such rights.

 

Registration and Use in Bad Faith

Respondent has been using the domain name to attract, for commercial gain, Internet users to Respondent’s affiliate or licensee web sites or other on-line locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s affiliate or licensee web sites, and thus has registered and used the domain name in bad faith.  Policy ¶ 4(b)(iv).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith where Respondent linked the domain name <wwwnokia.com> to <bestoftheweb.com>).

 

For these reasons, the Panel concludes that Complainant met the burden set forth in Policy ¶ 4(a)(iii) to show that Respondent has registered and used the domain name in issue in bad faith.

 

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.  Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "michealholigan.com" be transferred from Respondent to Complainant.

 

 

Honorable Carolyn Marks Johnson (Ret), Panelist

 

Dated: July 9, 2001.

 

 

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