WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking
Claim Number: FA0305000156716
Complainant is WeddingChannel.com Inc., Los Angeles, CA, USA (“Complainant”) represented by Leslie Gutowski, of Finnegan Henderson Farabow Garrett & Dunner LLP. Respondent is Andrey Vasiliev a/k/a NA and Free Domains Parking, Moscow, RU (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weddingchanel.com>, registered with Enom, Inc.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 2, 2003; the Forum received a hard copy of the Complaint on May 5, 2003.
On May 7, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <weddingchanel.com> 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 May 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 2003 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 firstname.lastname@example.org 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 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <weddingchanel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark.
2. Respondent does not have any rights or legitimate interests in the <weddingchanel.com> domain name.
3. Respondent registered and used the <weddingchanel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WeddingChannel.com Inc., holds numerous registrations for the WEDDING CHANNEL mark (e.g., U.S. Reg. No. 2,508,302, registered on November 20, 2001 and filed for registration on an Intent To Use basis on May 19, 1997). Complainant operates under the WEDDING CHANNEL mark to offer advice, information, guidance and resources for planning a wedding. At its <weddingchannel.com> domain name, Complainant offers a network of gift registry services, information on local vendors of wedding related products and services, and various segments devoted to the sequential order of steps a couple should take in planning a wedding. Currently, Complainant’s database contains over 1.3 million registries, and in 2002 over $85 million in bridal registry gifts were purchased through Complainant’s website.
Respondent, Andrey Vasiliev a/k/a NA and Free Domains Parking, registered the <weddingchanel.com> domain name on February 14, 2000, and is not licensed or authorized to use Complainant’s WEDDING CHANNEL mark for any purpose. Previously, Respondent used the disputed domain name to redirect Internet users to an online casino at the <entercasino.net> domain name. By July 31, 2002, Respondent was using the disputed domain name to frame a web directory website from the <bestoftheweb.com> domain name. Respondent was a member of that domain name’s affiliate program at that time.
Respondent subsequently began redirecting Internet users to the <centerfind.com> domain name, another web directory website. Currently, Respondent redirects Internet users to the <ancestry.com> domain name, and also generates a pop-up advertisement for an online casino.
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.
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 WEDDING CHANNEL mark through registration of the mark with the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).
Respondent’s <weddingchanel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark. Respondent’s domain name would be an exact duplicate of Complainant’s mark if not for the misspelling of the word CHANNEL by omitting the letter “n.” This slight alteration of Complainant’s mark is not enough to defeat a finding of confusing similarity 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 Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
Accordingly, the Panel finds that the <weddingchanel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark under Policy ¶ 4(a)(i).
Complainant can meet its initial burden under Policy ¶ 4(a)(ii) by demonstrating that the provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. Successfully making such a showing shifts Complainant’s burden onto Respondent, and Respondent’s default in the present dispute results in Respondent’s inability to meet that burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent has made many uses of the <weddingchanel.com> domain name, all having one thing in common. Respondent has always used the disputed domain name to redirect Internet users to websites unrelated to the WEDDING CHANNEL mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user. This diversionary and commercial use of Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
The value of Respondent’s domain name lies in the fact that it duplicates a common misspelling of Complainant’s mark. This, along with the fact that nothing in the disputed domain name’s WHOIS contact information indicates otherwise, compels the Panel to find that Respondent is not “commonly known by” the disputed domain name pursuant to Policy ¶ 4(c)(ii). This provision is therefore inapplicable to Respondent. 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 MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <weddingchanel.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <weddingchanel.com> domain name in bad faith. Specifically, each iteration of Respondent’s use of the disputed domain name has been commercial in one sense or another, be it through pop-up advertisements for online casinos or via referral fees from web directories or other commercial websites. Respondent registered a domain name which would ensnare Internet users who misspelled Complainant’s WEDDING CHANNEL mark to achieve these ends, creating an initial likelihood of confusion as to whether Complainant endorsed or somehow sponsored Respondent’s website. This use evidences registration and use of the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith where Respondent linked the domain name <wwwnokia.com> to <bestoftheweb.com>).; see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).
The Panel thus finds that Respondent registered and used the <weddingchanel.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <weddingchanel.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: June 12, 2003
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