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Mandalay Publications, Inc v. Estylo.com [2000] GENDND 991 (30 August 2000)

National Arbitration Forum

THE NATIONAL ARBITRATION FORUM

P.0. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

Mandalay Publications, Inc. )

Los Angeles, CA, USA, )

Complainant ) DOMAIN NAME DISPUTE

) ADMINISTRATIVE PANEL DECISION

)

Vs )

) Forum File Number: FA0007000095287

Estylo.com )

Lynnwood, WA, USA )

Respondent )

REGISTRAR AND DISPUTED DOMAIN NAME:

The domain name at issue is "ESTYLO.COM", registered with Network Solutions Inc.

("NSI")

PANELIST:

The panelist, Louis E. Condon, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

PROCEDURAL HISTORY:

Complainant submitted a complaint to the National Arbitration Forum ("The Forum") electronically on 07/25/2000; The Forum received a hard copy of the Complaint on 07/25/2000.

On 07/28/2000, NSI confirmed by e-mail to The Forum that the domain name "ESTYLO.COM" is 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 5.0 and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANNíS UDRP.

On 07/28/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/18/2000 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 Respondentís registration as technical, administrative and billing contacts, and to HYPERLINK mail to: postmaster@ estylo.com; and postmaster@estylo.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 August 22, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Louis E. Condon 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 Forumís Supplemental Rules and any rules and principals of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT:

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES CONTENTION:

1. Complainant

The Complainant contends that the domain name in question is identical to the Complainantís trademark. The Complainant asserts that the identical characteristics between Complainantís mark and Respondentís domain name will cause confusion in the minds of the public, leading the public to believe that the Respondentís website and/or goods and services originate from the Complainant or its licensees.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name and the Respondent registered and used the domain name in bad faith.

The Complainant claims that the Respondentís acts were committed willfully, wantonly, fraudulently and maliciously, with the intent to cause confusion and deceive prospective customers as to the true source of origin of its goods and services.

2. Respondent

The Respondent has not filed any Response to the Complaint.

The Respondentís failure to submit a response does not relieve the Complainant of its burden of proof to prove the elements in Policy Paragraph 4.a.(i)-(iii). However, the Respondentís failure to deny any of the Complainantís assertions permits the Panel to take the Complainantís assertions as true and to draw appropriate inferences. ICANN Rule 14(b).

FINDINGS:

The Complainant has submitted documents which demonstrate rights in the U.S. trademark registration for the mark ESTYLO, No. 2,157426, registered on May 12, 1998. The Complainant uses the mark in connection with the following goods: "Magazine addressed to Hispanic women covering the areas of health and fitness, beauty and fashion, travel, food, career development, and culture. The Complainant owns the domain names "estylo.net" and "estylomag.com".

The Respondent registered the domain name on April 13, 2000, and is using it in connection with products and services similar to the Complainantís products and services.

DISCUSSION:

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 canceled 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 used in bad faith.

Identical and/or Confusingly Similar:

The Complainant has rights in the registered trademark, ESTYLO. The Respondentís domain name is identical to the Complainantís registered mark.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not provided evidence of any circumstances giving rise to a right to or legitimate interest in the domain name.

The Complainant has used its mark, ESTYLO, since 1997. The Respondent is not commonly known by the domain name, which is identical to the Complainantí mark. Policy Paragraph 4.c.(ii).

The Respondent is capitalizing upon the Complainantís established marks by representing or attempting to represent that the goods and services for sale by the Respondent were made and sold under the Complainantís authority. The Respondentís acts have allowed it to sell goods and services with minimal effort due to the prominence of the Complainantís mark. For these reasons, I conclude that the Respondent has not used the domain name in connection with a bona fide offering of goods and services. Policy Paragraph 4.c.(i). I also conclude that the Respondent has not made a fair or legitimate use of the domain name. Policy Paragraph 4.c.(iii).

Registration and Use in Bad Faith

The Complainant asserts that the Respondent has registered and used the domain name in bad faith.

The Respondentís adoption of the Complainantís mark is likely to cause confusion to consumers seeking the Complainantís website and services. The Panel infers that the Respondent had or should have had knowledge of the Complainantís mark and established goods and services upon the registering the domain name in question given the fact that the domain name is identical to the Complainantís registered mark. The Respondent registered the domain name in question in order to profit from the Complainantís established mark, which is evidence of bad faith.

The Respondent also used the domain name in question in bad faith. The Respondent attracted Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its products and services on its website. Policy Paragraph 4.b.(iv).

Based on these findings, I conclude and determine that the Respondent registered and used the domain name 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 the fore-

going reasons, IT IS ORDERED that the domain name "ESTYLO.COM" be transferred from the Respondent to the Complainant.

Louis Condon, Panelist, August 30, 2000

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