Picture Brite Corporation and Picture
Bright Corporation v. JENRAY c/o Steve
Johnson
Claim
Number: FA0503000437811
Complainant is Picture Brite Corporation and Picture Bright Corporation (“Complainant”), represented by Gary M. Kramer, of Berenbaum, Weinshienk
and Eason, P.C., 370 17th
Street, Suite 4800, Denver, CO 80202-5698. Respondent is JENRAY c/o Steve Johnson (“Respondent”), 1444 West 46th
Avenue, Denver, CO 80211.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <picturebrightcorp.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 11, 2005.
On
March 10, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <picturebrightcorp.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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
March 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 6, 2005
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@picturebrightcorp.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 14, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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 <picturebrightcorp.com>
domain name is confusingly similar to Complainant’s PICTURE BRITE CORP. mark.
2. Respondent does not have any rights or
legitimate interests in the <picturebrightcorp.com> domain name.
3. Respondent registered and used the <picturebrightcorp.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Picture Brite Corporation and Picture Bright Corporation, sells marital aids
over the Internet. Complainant has used the PICTURE BRITE CORP. mark since at
least as early as 1998. Complainant has filed an application with the United
States Patent and Trademark Office (“USPTO”) for the PICTURE BRITE CORP. mark
(Serial No. 78,551,303 filed January 21, 2005). Complainant has invested
significant time, effort and expense in building customer recognition and
confidence in the PICTURE BRITE CORP. mark.
Respondent
registered the <picturebrightcorp.com> domain name on May 14,
2004. Respondent uses the domain name to direct Internet users to a website
that features competing marital goods and products.
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.
Respondent has
failed to respond to the Complaint. Therefore, the Panel may accept all
reasonable assertions and allegations set forth by Complainant as true and
accurate. See Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence); 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.”).
Complainant has
established rights in the PICTURE BRITE CORP. mark despite the fact that
Complainant has not registered the mark with any trademark authority. See
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”);
see also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that Complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist).
Complainant asserts that its PICTURE BRITE CORP. mark has gained
secondary meaning through its continuous use in commerce since at least as
early as 1998 and through significant expenditures Complainant has made on
building customer recognition and confidence in its mark. Respondent has failed
to contest this assertion; therefore, the Panel accepts Complainant’s assertion
as true. Thus, Complainant has effectively established common-law rights in the
PICTURE BRITE CORP mark. 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 Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(finding that Complainant had provided evidence that it had valuable goodwill
in the <minorleaguebaseball.com> domain name, establishing common law
rights in the MINOR LEAGUE BASEBALL mark).
Respondent’s <picturebrightcorp.com>
domain name is confusingly similar to Complainant’s PICTURE BRITE CORP
mark. Respondent’s <picturebrightcorp.com> domain name
incorporates Complainant’s PICTURE BRITE CORP mark in its entirety and merely
uses the homonym, “bright” in the place of the word “brite,” in Complainant’s
mark, which is also a phonetically identical word. Such changes are not enough
to distinguish Respondent’s domain name from Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
the domain name <mannbrothers.com> confusingly similar to Complainant’s
MANN BROTHERS mark “so as to likely confuse Internet users who may believe they
are doing business with Complainant or with an entity whose services are
endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying
the confusing similarity requirement”); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr.
7, 2000) (finding that a domain name which is phonetically identical to
Complainant’s mark satisfies Policy ¶ 4(a)(i)).
Further,
Respondent’s <picturebrightcorp.com> domain name merely adds the
generic top-level domain “.com” which is not enough to distinguish Respondent’s
domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(iii). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no legitimate interests in the disputed domain
name, and Respondent, by not submitting a response, has failed to rebut this
assertion. Thus, the Panel may interpret Respondent’s failure to respond as
evidence that Respondent lacks rights and legitimate interests in the <picturebrightcorp.com>
domain name pursuant to Policy ¶ 4(a)(ii). See 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.”); see
also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
Respondent is
using the disputed domain name, which is confusingly similar to Complainant’s
PICTURE BRITE CORP mark, to direct Internet users to a website offering competing
goods. Such use is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <picturebrightcorp.com>
domain name or is authorized to register domain names incorporating
Complainant’s PICTURE BRITE CORP mark. Thus, the Panel finds that Respondent
lacks rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that respondent does not have rights in a domain name when respondent
is not known by the mark).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
used the <picturebrightcorp.com> domain name in bad faith pursuant
to Policy ¶ 4(b)(iii) by using the domain name, which contains a confusingly
similar version of Complainant’s PICTURE BRITE CORP mark, to direct Internet
users to a website that features competing goods. 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 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) &
(iv).”).
Furthermore, Respondent is capitalizing on the goodwill of the
PICTURE BRITE CORP mark by using the disputed domain name to divert Internet
users to a website featuring competing goods. The Panel infers that Respondent
receives click-through fees for redirecting Internet users to this competing
website. Since Respondent is using a domain name that is confusingly similar to
Complainant’s mark, consumers accessing Respondent’s domain name may become
confused as to Complainant’s affiliation with the resulting website. Thus, the
Panel finds that Respondent’s commercial use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv);
see also Reuters Ltd. v. Global
Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where
respondent attracted users to a website sponsored by respondent and created
confusion with complainant’s mark as to the source, sponsorship, or affiliation
of that website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <picturebrightcorp.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
April 27, 2005
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