Oregon State Bar v. A Special Day, Inc.
Claim Number: FA0109000099657
Complainant is Oregon State Bar, Lake Oswego, OR (“Complainant”) represented by James E. Geringer, of Klarquist Sparkman LLP. Respondent is A Special Day, Inc., Tigard, OR (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oregonstatebar.tv>, registered with Tucows.
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. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 4, 2001; the Forum received a hard copy of the Complaint on September 4, 2001.
On September 20, 2001, Tucows confirmed by e-mail to the Forum that the domain name <oregonstatebar.tv> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 September 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 11, 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 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 September 21, 2001, the Respondent Daniel A. Bernath, General Manager for A SPECIAL DAY PHOTO notified the Forum that this proceedings was unnecessary because “Before the complaint was filed I have repeatedly agreed to turn over the domain name oregonstatebar.tv to the complainant.”
On October 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
A stay order was entered and then lifted on the motion of the Complainant November 19, 2001.
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 urges that:
The <oregonstatebar.tv> domain name is confusingly similar to Complainant's mark; that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith.
B. Other than the email note sent to the Forum, the Respondent did not submit a response in this proceeding.
Complainant has used the OREGON STATE BAR mark as its trade name and trademark for over half a century. Complainant licenses and regulates Oregon's lawyers and administers the state's system of lawyer discipline. Complainant also provides services to help the public understand and access the justice system, and offers numerous publications, videos, seminars and other programs to enhance the service and professionalism of its member lawyers. Complainant is the owner of the domain name <oregonstatebar.net>.
Respondent registered the <oregonstatebar.tv> domain name after being denied membership to Complainant's organization. Respondent is using the domain to sell law-related books and advertise legal services. Respondent has commercial arrangements with <commissionjunction.com>, <mycounsel.com> and <shopintuit.com> and profits from traffic to his website based on these arrangements. Respondent displays an exact replica of Complainant's logo on Respondent's website. Respondent has offered to sell the domain name to Complainant for $10,000.
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 Respondent is identical or confusingly similar to a trademark or service mark in which 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.
Complainant, through continuous and extensive use has established that it has rights in the OREGON STATE BAR mark. Furthermore, the <oregonstatebar.tv> domain name is identical to Complainant's mark. The addition of a top-level indicator such as ".com" or ".org" is not enough to establish a claim of confusing similarity. See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); 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 has established that it has rights to and legitimate interests in the domain name at issue here. Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <oregonstatebar.tv> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
Respondent's advertising of legal services and sale of law-related books under Complainant’s name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods. See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
Furthermore, there is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <oregonstatebar.tv> domain name pursuant to Policy ¶ 4 (c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Respondent is intentionally diverting Internet users from Complainant's site for his own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant also urges that Respondent acted in bad faith in registering and using the domain name in issue. Respondent, by using Complainant's mark in the disputed domain name has created a likelihood of confusion in order to attract Internet users to Respondent's website selling legally related goods. Complainant also provides legal goods and services and therefore Respondent's registration and use of the <oregonstatebar.tv> domain name is evidence of bad faith. See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).
Furthermore, because of the distinctive nature of Complainant's mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <oregonstatebar.tv> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Respondent's offer to sell the disputed domain name to the Complainant for $10,000, a sum exceeding out-of-pocket expenses resulting from registration, is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <oregonstatebar.tv> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2001.
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