Computer Doctor Franchise Systems, Inc. v. The Computer Doctor
Claim Number: FA0008000095396
The Complainant is Computer Doctor Franchise Systems, Aberdeen, SD, USA ("Complainant"). The Respondent is The Computer Doctor, Tullahoma, TN, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "COMPUTERDOCTOR.COM" and "COMPUTERDOCTOR.NET", registered with Network Solutions Inc ("NSI").
The Panelist 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 the panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 8, 2000; The Forum received a hard copy of the Complaint on August 8, 2000.
On August 9, 2000, NSI confirmed by e-mail to The Forum that the domain names "COMPUTERDOCTOR.COM" and "COMPUTERDOCTOR.NET", are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 for "COMPUTERDOCTOR.COM" and Version 5.0 for "COMPUTERDOCTOR.NET" and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On August 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to email@example.com and firstname.lastname@example.org.
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 September 6, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody 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 Uniform 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 the Respondent.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The Respondent’s domain names are confusingly similar and identical to the Complainant’s mark. The Respondent has no legitimate right or interest in the domain names. The Respondent has registered and used the domain names in bad faith by violating ¶ 4.b.(iii) and (iv).
The Respondent submitted no response.
The Complainant commenced operations in 1992 in Aberdeen, South Dakota. The Complainant first began using the mark COMPUTER DOCTOR in 1992.
The Complainant owns U.S. trademark registrations for the following marks and designs:
The Respondent’s domain names links Internet users to a blank website that only contains links to other websites.
The Complainant corresponded with the Respondent, advising the Respondent of rights in its registered marks. The Respondent initially committed to transfer the domain names and discontinue all business activities under the mark COMPUTER DOCTOR. The Respondent has failed to do so. Instead, the Respondent modified his website to feature links to third parties’ websites and adding a disclaimer at the bottom of the site renouncing affiliation with the Complainant.
At the top of the Respondent’s webpage words appear indicating that the Respondent is offering a free service. While the Respondent’s services might be free, the Panel concludes that the Respondent is making a profit from the advertising and links posted on the website.
ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. Because the Respondent failed to submit a response, the Panel will accept all rational inferences presented in the Complaint.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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) the 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
The Complainant has rights in the mark COMPUTER DOCTOR. The Respondent’s domain names are identical to the Complainant’s registered mark in sight and sound, as well as intended use and meaning. See Internet America Inc v. Internet America, D2000-0355 (WIPO June 19, 2000) (finding that the domain name <internetamerica.com> is identical to Complainant’s mark).
Rights or Legitimate Interests
The Complainant asserts that Respondent has no legitimate right or interest in the domain names. The Respondent has not denied this assertion.
The Complainant’s federal registration of its trademark predates the registration of the Respondent’s domain names. The Respondent’s purported use of the domain names is identical to the Complainant’s actual use of its mark. The Panel concludes that the Respondent had knowledge of the Complainant's marks and corresponding services at the time that the Respondent registered the domain names. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 15, 2000) (finding that Respondent "clearly had knowledge or reasonably should have had knowledge" of Complainant’s well-known mark).
The Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names. The Respondent is not using the domain names in connection with a bona fide offering of goods and services nor for a legitimate noncommercial purpose. Policy ¶ 4.c.(i), (iii).
The Respondent has not contended that it is commonly known by the Complainant’s mark, COMPUTER DOCTOR.
Based on the foregoing, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names in question.
Registration and Use in Bad Faith
The Complainant contends that the Respondent registered and used the domain names in bad faith, specifically in violating of Policy ¶ 4.b.(iii) and (iv).
The Respondent has linked the domain names to a blank page that contains links to third parties’ websites. The Respondent registered and used the domain name to attract users to a website by creating confusion with the Complainant’s mark as to the source, sponsorship, endorsement, or affiliation of that website). Policy ¶ 4.b.(iv). See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 21, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainant’s business); Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
Based on the foregoing, the Panel concludes that the Respondent registered and used the domain names in bad faith.
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 names, "COMPUTERDOCTOR.COM" and "COMPUTERDOCTOR.NET", be transferred from the Respondent to the Complainant.
Hon. James A. Carmody, Arbitrator
Dated: September 8, 2000
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