DECISION

Multi-Media Publishing & Packaging, Inc. v. None

Claim Number: FA0206000114497

PARTIES

Complainant is Multi-Media Publishing & Packaging, Inc., Chatsworth, CA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is None, Woodland Hills, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <discduplication4less.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 5, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.

On June 6, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <discduplication4less.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2002 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@discduplication4less.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 July 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The <discduplication4less.com> domain name is confusingly similar to Complainant’s DUPLICATION 4 LESS mark. 

Respondent has no legitimate rights or interests in the <discduplication4less.com> domain name.

Respondent registered and used the <discduplication4less.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns United States Patent and Trademark Reg. No. 2,420,323 for the DUPLICATION 4 LESS mark.  Complainant uses the DUPLICATION 4 LESS mark in connection with its manufacturing and duplicating videotapes, cassettes and CD-ROMs services.  Complainant has used the mark for over 100 million duplications.

Complainant operates a website at <duplication4less.com> where it conducts a substantial amount of business.  Complainant was awarded the Golden Web Award for excellence in web design, originality and content in 1999. 

After the Complainant had established its business and used the mark extensively enough to warrant trademark protection, Respondent set up a new business less than two miles from Complainant’s main store.  Respondent’s new business offered the same services that Complainant’s business provides. 

Respondent registered the <discduplication4less.com> domain name on February 8, 2002.  Respondent uses the domain name in connection with a website that offers services in competition with Complainant.  Complainant claims that Respondent copied substantial portions of Complainant’s copyrighted website and uses Complainant’s mark within the website.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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

Complainant established its rights to the DUPLICATION 4 LESS mark through registration with the United States Patent and Trademark Office and subsequent continuous use.

Respondent’s <discduplication4less.com> domain name contains Complainant’s entire DUPLICATION 4 LESS mark only adding the word “disc,” which is related to Complainant’s field of business.  The addition of an industry specific word does not detract from the dominating presence of Complainant’s mark.  Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the <discduplication4less.com> domain name and Respondent’s failure to respond, it may be presumed that Respondent has no such rights in the 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, since Respondent did not submit a Response, all reasonable inferences may be drawn 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 uses the <discduplication4less.com> domain name as an address for its website, which is used to operate a business virtually identical to Complainant’s business.  At Respondent’s website, Respondent uses Complainant’s DUPLICATION 4 LESS mark within the website’s content.  Respondent’s use of Complainant’s mark to offer similar services does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a Respondent’s operation of a website using a domain name which is confusingly similar to Complainant’s mark and for the same business”).

Respondent never received permission to use Complainant’s DUPLICATION 4 LESS mark for any purpose, nonetheless, in conjunction with a business virtually identical to Complainant’s business.  Complainant notes that “Respondent is not known individually, or as a business, or in any other manner by ‘disc duplication 4 less’ or ‘discduplication4less.com.’”  Respondent has not come forward to rebut Complainant’s contentions, so it is presumed that Respondent is not commonly known by the <discduplication4less.com> domain name or any other variation thereof.  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The determination of bad faith is not limited to the circumstances listed in Policy ¶ 4(b).  The Panel may look at the totality of circumstances to determine whether or not Respondent registered and used the disputed domain name in bad faith.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

The uncontested evidence strongly indicates that Respondent knew of Complainant before it started its business and registered the <discduplication4less.com> domain name.  The evidence that allows an inference to be made that Respondent had prior knowledge of Complainant is:  (1) Respondent established its place of business less than two blocks from Complainant’s main office; (2) Respondent’s directly copied portions of Complainant’s website and uses them for its website at <discduplication4less.com>; and (3) Respondent uses Complainant’s mark throughout its website.  Therefore, it is evident that Respondent registered the domain name with knowledge of Complainant’s rights in the DUPLICATION 4 LESS mark, which represents bad faith registration under Policy ¶ 4(a)(iii).  Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent’s use of Complainant’s mark in the <discduplication4less.com> domain name for a website that offers substantially the same services as Complainant was done in bad faith under Policy ¶ 4(b)(iii).  Under the circumstances, it can be inferred that Respondent’s blatant use of Complainant’s mark was for the purpose of disrupting Complainant’s business, a competitor of Respondent.  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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, it is apparent that Respondent registered and used the <discduplication4less.com> to confuse and attract Internet users to its competing website.  Respondent’s use of Complainant’s entire mark in its domain name causes confusion as to the source, sponsorship, or affiliation of Respondent’s website.  Therefore, Respondent’s registration and use of the domain name constitutes bad faith under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <discduplication4less.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 12, 2002

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