DECISION

Imation Corp. v. Jean Streut

Claim Number: FA0209000125759

PARTIES

Complainant is Imation Corp., Oakdale, MN, USA (“Complainant”) represented by Elizabeth C. Buckingham, of Dorsey & Whitney LLP.  Respondent is Jean Streut, Paris, FRANCE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <imation-net.net>, registered with iHoldings.com, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 24, 2002; the Forum received a hard copy of the Complaint on September 25, 2002.

On September 25, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that the domain name <imation-net.net> is registered with iHoldings.com, Inc. and that Respondent is the current registrant of the name. iHoldings.com, Inc. has verified that Respondent is bound by the iHoldings.com, 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 September 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 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@imation-net.net 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 October 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,  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’s Submission makes the following assertions:

1. Respondent’s <imation-net.net> domain name is confusingly similar to Complainant’s registered IMATION family of marks.

2. Respondent does not have any rights or legitimate interests in the <imation-net.net> domain name.

3. Respondent registered and used the <imation-net.net> domain name in bad faith.

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

FINDINGS

Complainant, Imation Corp., holds many registrations incorporating variations of its IMATION mark. Complainant registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) Reg. Nos. 2,282,195 and 2,355,495 for its IMATION mark on September 28, 1999 and June 6, 2000, respectively. Variations of Complainant’s IMATION mark have also been registered in over 60 jurisdictions worldwide.

In addition, Complainant currently has registered over 75 variations of the domain name <imation.net>. These sites offer information about Complainant’s computer software, data storage products, computer consultation services and related goods and services in many different languages.

Respondent, Jean Streut, registered its <imation-net.net> domain name on May 2, 2002. Currently, Respondent’s domain name resolves to an online casino at <diamonddollarcasino.com>, registered and operated by a third party, which contains “pop-up” advertisements appearing once an Internet user reaches the website. Nowhere on Respondent’s website or the associated online casino will a user find the word “Imation”.  Respondent is not licensed or otherwise authorized to make any use of the IMATION family of marks for any purpose.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the IMATION family of marks through registration with the USPTO and subsequent continuous use of the marks.

A Panel can find confusingly similarity when considering a domain name with characteristics that consist of mere cosmetic differences between the name and the mark. The addition of a generic word or term to a registered mark in a domain name, especially if that mark is well known, is not a substantive enough alteration to prevent a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark).

Furthermore, as a generic top-level domain (such as “.net”) is required for every domain name, this addition will not have any effect on whether Respondent’s domain name is confusingly similar to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”); 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). Finally, the addition of a hyphen to a domain name that is confusingly similar to a trademark is inconsequential. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

The generic term “net” following Complainant’s distinctive, registered IMATION mark in Respondent’s domain name does nothing to diminish its confusing similarity with the mark. The dominant feature of Respondent’s domain name remains the word “Imation”. Respondent’s addition of the hyphen subsequent to the IMATION mark and the addition of  “.net” after its domain name is also inconsequential when determining confusing similarity.

Accordingly, the Panel finds that the <imation-net.net> domain name is confusingly similar to Complainant’s distinctive and registered IMATION mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain name, the fact that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

It is neither a bona fide offerings of goods or services nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a confusingly similar domain name is using that domain name to profit from a complainant’s registered mark. 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 N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).

In the present dispute, Respondent is using its domain name in order to facilitate operation of an online gambling service, presumably for a fee. Respondent gains additional revenue from “pop-up” advertisements that appear when an Internet user reaches the website. Such use does not constitute noncommercial or fair use of the domain name. In addition, there appears to be no connection between the domain name <imation-net.net> and any of the services provided by Respondent. Respondent is simply diverting Internet users to its website by using Complainant’s registered mark without offering any bona fide goods or services of its own. By submitting these facts to the Panel, Complainant has shown that Respondent is not making a bona fide offering of goods or services in facilitating access to an online casino, nor is it fairly using its domain for legitimate noncommercial uses. See Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).

Furthermore, Complainant has not licensed Respondent to use its mark and can find no data supporting the proposition that Respondent is commonly known by the domain name. Nowhere on Respondent’s website does the word “Imation” appear. Due to the general popularity of the very distinctive IMATION mark, it is doubtful that any entity could be commonly known by Complainant’s mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). These showings by Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims Respondent could make under the Policy. Thus, Complainant adequately meets its burden of demonstrating Respondent’s lack of rights and legitimate interest in the domain name.

Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.

As Respondent submitted nothing to the Panel in Response to the Complaint, Respondent fails to meet that burden. Respondent submitted nothing to the Panel in response to the Complaint. In these circumstances Respondent’s failure to affirmatively demonstrate any rights or legitimate interests in its domain name results in a finding for Complainant. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise); see also 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).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

It is evidence that a domain has been registered and used in bad faith when a Respondent registers a domain name that is confusingly similar to a trademark despite actual or constructive notice of the mark. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (because of the fame attained by Complainant’s mark, it can be presumed that Respondent knew of U-HAUL before registering the disputed domain names); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Similarly, Policy ¶ 4(b)(iv) illustrates an example of bad faith use and registration when dealing with a popular mark. The Policy states that when a domain name is used to intentionally attempt to attract, “for commercial gain, Internet users to [Respondent’s] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site” it is an example of bad faith use and registration. Taken together, the use of a registered mark to divert Internet traffic to a website unrelated to and unauthorized by the holder of the mark evidences bad faith use and registration. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

In this dispute, Respondent registered <imation-net.net> years after Complainant registered its distinctive mark. Furthermore, Complainant had used this mark continually and globally for years prior to its registration. Respondent’s use of the IMATION mark in its domain name, despite being on actual or constructive notice of its registered status, evidences bad faith. Furthermore, Respondent is taking advantage of the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website that results from holding a domain name that is confusingly similar to a registered trademark. In attracting users via this confusion in order to earn commercial profit through association with online gambling sites and advertisements, Complainant has shown that Respondent both registered and has continued to use its domain name in bad faith.

In light of Respondent’s failure to respond in these proceedings, Complainant has shown sufficient evidence for the Panel to conclude that Respondent both acquired and used <imation-net.net> in bad faith.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Accordingly, the Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <imation-net.net> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: November 8, 2002

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