DECISION

Smith Sport Optics, Inc. v. mk a/k/a Mike Flynn

Claim Number: FA0206000114590

PARTIES

Complainant is Smith Sport Optics, Inc., Ketchum, ID (“Complainant”) represented by James E. Griffith, of McDermott, Will & Emery.  Respondent is mk a/k/a Mike Flynn, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <smithsunglasses.com>, registered with ENOM, Inc.

PANEL

On July 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned Panelist 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.

On June 14, 2002, ENOM, Inc. confirmed by e-mail to the Forum that the domain name <smithsunglasses.com> is registered with ENOM, Inc. and that Respondent is the current registrant of the name.  ENOM, Inc. has verified that Respondent is bound by the ENOM, 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 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 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@smithsunglasses.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.

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

1. Respondent’s <smithsunglasses.com> domain name is confusingly similar to Complainant’s registered SMITH mark.

2. Respondent does not have any rights or legitimate interests in the <smithsunglasses.com> domain name.

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

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous trademark registrations with the U.S. Patent and Trademark Office (“USPTO”) for its SMITH mark.

Since 1969, Complainant has continually used the SMITH mark, and variations of said mark, in commerce in connection with the sale and offering of sunglasses, goggles, ski wear, sporting equipment, clothing and related parts and accessories. Complainant also operates a website located at <smithsport.com>, which serves dual functions in advertising its products and providing news and information with regards to the fields of skiing, motocross, snow boarding and biking.

MARK	REG. NO.	REG. DATE	DATE OF FIRST USE	GOODS/SERVICES
SMITH	1,805,877	11/23/1993	12/1969 in Class 9; 3/1991 in Class 21; 1979 in Class 25; 12/1969 in Class 28	Spectacles; eyeglasses; sunglasses; face shields; goggle film advancement systems comprising clear plastic film for use with goggles to provide clear vision, apparatus for advancing said film and film replacement rolls; motorcycling goggles and replacement lenses therefore, in Class 9 Clothes and sponges for wiping and defogging eyeglasses, goggles and ski lenses, in Class 21; T-shirts, hats and headbands, in Class 25
SMITH	1,189,158	2/9/1982	12/1969	Sport goggles
BOB SMITH GOGGLE COMPANY	1,989,172	7/23/1996	3/1995	Sport goggles for use in skiing, snowboarding, bicycling, motorcycling, and other active outdoor sports

Several of Complainant’s SMITH trademark registrations, including Reg. No. 1,805,877, have achieved incontestable status pursuant to § 15 of the Lanham Act, as amended. 15 U.S.C. § 1065 (2002).

As a result of Smith’s widespread, longstanding continuous and prominent use, the SMITH mark has acquired significant goodwill and fame within its specialized field. Complainant’s SMITH mark and products are known to the public who recognize the source and origin of the mark and associate it with Complainant.

Respondent registered the <smithsunglasses.com> domain name on January 18, 2002. Complainant’s Submission reveals that in January 2002, Domain Bank, Inc., a company specializing in the bulk registration, warehousing and sale of domain names, had registered the subject domain name. After Complainant attempted to contact Domain Bank regarding the registration of the domain name, Domain Bank transferred <smithsunglasses.com> to Domainsaleinc.com, an entity also engaged in the practice of trafficking domain names. A subsequent inquiry by Complainant with Domainsaleinc.com on January 21, 2002 led to an e-mail from Respondent offering to sell the <smithsunglasses.com> domain name for $1000. Since then, the disputed domain name has been transferred twice and was temporarily being used as an anti-abortion website. Currently, Respondent retains rights in the domain name and is linking <smithsunglasses.com> to commercial pharmaceutical websites located at <cyberpills.com> and <e-scripts-md.com>. 

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 has established rights in the SMITH mark through registration with the USPTO and continuous use of the mark in commerce since 1969.

Respondent’s <smithsunglasses.com> domain name is confusingly similar to Complainant’s SMITH mark. Respondent’s domain name incorporates Complainant’s SMITH mark in its entirety, deviating only by the addition of the industry-related word “sunglasses,” the products that Complainant sells under its mark. The word “sunglasses” contains no source identifying significance, and consumers who visit <smithsunglasses.com> are likely to associate the domain name with Complainant and its registered mark. Respondent’s second level domain name holds no significance without the addition of Complainant’s SMITH mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also 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).

Furthermore, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark fails to distinguish the domain name and is inconsequential when conducting a “confusingly similar” analysis under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the gTLD “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Respondent’s <smithsunglasses.com> domain name is confusingly similar to Complainant’s SMITH mark, thereby satisfying Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <smithsunglasses.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable 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 currently links the disputed domain name to websites that offer pharmaceutical products over the Internet. Although the domain name has been the subject of previous improprieties (e.g., sold by Domain Bank, transferred by Domainsaleinc.com and linked to an anti-abortion website), Respondent’s opportunistic registration of the infringing domain name satisfies Policy ¶ 4(a)(ii) requirements by itself. Respondent intentionally sought registration of a domain name that incorporated Complainant’s famous SMITH mark in order to divert Internet users to its commercial websites. Respondent’s attempt to opportunistically trade off the goodwill associated with Complainant’s mark is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See 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); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

There is no evidence that suggests Respondent is commonly known by <smithsunglasses.com>. Complainant’s investigation revealed that there is no reference to or any use of either the SMITH mark, any person with the name of Smith, or anything pertaining to “sunglasses” anywhere on the pharmaceutical websites linked to the subject domain name. Because Complainant’s SMITH mark has been in use for over thirty years and has acquired a significant amount of fame, and Respondent’s domain name has no apparent connection with the SMITH sunglasses it denotes, there is a presumption that Respondent does not have any rights or legitimate interests in a domain name that incorporates Complainant’s SMITH mark in its entirety. See 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); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel determines that Respondent has no rights or legitimate interests in <smithsunglasses.com>; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The criterion specified in ¶ 4(b) of the Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See 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”); see also 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).

Because of the fame associated with Complainant’s SMITH mark in the optical industry and Complainant’s listing on the Principal Register of the USPTO, Respondent had constructive notice of Complainant’s rights in the SMITH mark. Respondent’s subsequent registration of an infringing domain name, despite knowledge of Complainant’s preexisting rights, represents bad faith pursuant to Policy ¶ 4(a)(iii). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of Complainant’s widespread promotional efforts coupled with diversion from Complainant’s site to Respondents for competing commercial gain is sufficient evidence of bad faith registration and use); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Additionally, Respondent’s intent to profit from exploitation of the infringing domain name by linking it to the <e-scripts-md.com> and <cyberpills.com> websites represents bad faith registration and use under Policy ¶ 4(b)(iv). Circumstances indicate that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating confusion as to the source of the website. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

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 relief shall be hereby GRANTED.

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

James P. Buchele, Panelist

Dated:  July 30, 2002

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