DECISION
Gem-Tiles v. Carlo SpemaClaim Number: FA0211000129125 PARTIESComplainant is Gem-Tiles, LLC,
Orlando, FL, USA (“Complainant”) represented by Sylvia B. Clough.
Respondent is Carlo Spema,
Taipei, TAIWAN (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <gemtiles.com>,
registered with GoDaddy Software, Inc.
PANELThe undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict
in serving as Panelist
in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORYComplainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on November 4, 2002; the Forum received
a hard copy of
the Complaint on November 6, 2002. On November 5, 2002, GoDaddy Software, Inc. confirmed by e-mail to the
Forum that the domain name <gemtiles.com>
is registered with GoDaddy Software, Inc. and that Respondent is the current
registrant of the name. GoDaddy
Software, Inc. has verified that Respondent is bound by the GoDaddy Software,
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 November 8, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 28, 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@gemtiles.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 December 13, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
Sandra Franklin 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 SOUGHTComplainant requests that the domain name be transferred from Respondent to
Complainant. PARTIES’ CONTENTIONSA. ComplainantThe <gemtiles.com> domain name is
identical to Complainant’s GEM-TILES trademark. Respondent has no
rights or legitimate interests in the <gemtiles.com>
domain name. Respondent registered and used the <gemtiles.com> domain name in bad
faith. B. RespondentRespondent failed to submit a Response in this proceeding. FINDINGSComplainant owns Reg. No. 2,581,874 for the GEM-TILES
mark with the United States Patent and Trademark Office (“USPTO”), registration
date June 18, 2002 and first use in commerce January 31, 2001. Complainant uses the GEM-TILES mark in
connection with its tile manufacturing business. Complainant manufactures, distributes, and sells tiles made of
genuine gemstones, exotic seashells, and composite tiles with a ceramic
base. Respondent registered the <gemtiles.com> domain name on September 18, 2002. Respondent is identified as Carlo Spema, but
more significantly, Complainant discovered that Respondent is connected with an
entity
that Complainant attempted to conduct business with, Jumbo Pacific, Inc.
(“Jumbo”). In July 2001, Complainant
entered into business negotiations with Jumbo, whereby an agreement was reached
to have Jumbo manufacture
sample tiles.
Complainant furnished Jumbo with the specifications for the tiles. Upon
completion and delivery of the sample tiles, Complainant did
not approve of the
quality and the business relationship was ended. In February 2002, Complainant discovered that
Respondent, Carlo Spema, placed the sample tiles on the <jpacific.com>
website. Complainant discovered that
Respondent was soliciting business for Complainant at the <jpacific.com>
website without prior approval.
Subsequently, Complainant discovered that the same sample tiles were
being promoted for sale on the <gemtiles.com>
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 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 SimilarComplainant has established its rights in the
GEM-TILES mark through proof of trademark registration with the USPTO. Respondent’s <gemtiles.com>
domain name contains Complainant’s entire GEM-TILES mark absent the
hyphen. The subtraction of the hyphen
is inconsequential when conducting a Policy ¶ 4(a)(i) identical analysis
because a hyphen has no distinguishing
characteristics. Furthermore, the addition of the generic
top-level domain “.com” is also without legal significance because top-level
domains are
required in every domain name.
Therefore, Respondent’s <gemtiles.com>
domain name is identical to Complainant’s GEM-TILES mark. 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"); see also Ritz-Carlton Hotel Co. v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain
names is not sufficient to differentiate the domain
names from the mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without
legal significance since use of a gTLD is required
of domain name registrants"). The Panel finds that Policy ¶ 4(a)(i) is satisfied. Rights or Legitimate InterestsComplainant has alleged a prima facie case and as a result a presumption arises that
Respondent has no rights or legitimate interests in the <gemtiles.com> domain name.
This presumption can be rebutted with an articulation of rights or
legitimate interests on the part of Respondent. At present, Respondent has failed to come forward with a Response
and thus has not successfully rebutted the presumption. Therefore, the Panel infers that Respondent
has no such rights or legitimate interests in the <gemtiles.com> domain name.
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); see
also 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, the Panel will accept all of
Complainant’s allegations as true and will draw all reasonable inferences in
favor of Complainant
due to Respondent’s failure to challenge the
Complaint. 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”);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
to be deemed true). Complainant has argued that Respondent is soliciting
sales for the sample tiles, which Complainant rejected from Jumbo, at a website
connected to the <gemtiles.com>
domain name. As stated, Respondent is
connected with Jumbo as Respondent initially promoted the sample tiles at the
<pjumbo.com> website. The use of
another entity’s mark to solicit sales of goods that compete with that entity
is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i),
nor does such behavior represent a noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Chip Merch., Inc. v. Blue
Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed
domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods); 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). Respondent is not commonly known by the <gemtiles.com> domain name. Respondent is identified as Carlo Spema and
has business connections with the aforementioned Jumbo. Complainant’s business relationship with
Jumbo was brief and at no time did Complainant authorize the use of its
GEM-TILES mark. Therefore, Respondent
has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See
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 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). Accordingly, the Panel finds that Respondent has no
rights or legitimate interests in the <gemtiles.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad FaithGiven the former business relationship Complainant had
with Jumbo and Respondent’s apparent working relationship with Jumbo, it is
clear that Respondent had knowledge of Complainant’s interest in the GEM-TILES
mark. Respondent uses the <gemtiles.com> domain name to
resolve to a website that advertises the sample tiles Jumbo made pursuant to
Complainant’s specifications. Thus,
Respondent is using Complainant’s GEM-TILES mark to offer competing goods for
sale. Such behavior with knowledge of
Complainant’s interests in the mark evidences an intent to disrupt
Complainant’s business. Therefore,
Respondent’s actions fall under the purview of Policy ¶ 4(b)(iii). 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
VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad
faith where Respondent has connections with a competitor of Complainant’s
digital security
business and Respondent indicated that she intended to enter
the same business). Furthermore, by using Complainant’s GEM-TILES mark to
denote the sale of products within Complainant’s same industry, particularly
sample tiles that were made according to Complainant’s specifications, the
consuming public is likely to be confused as to Complainant’s
association with
the resulting website. Also,
Respondent’s intent is apparently to profit from this use because Respondent
solicits the sale of the sample tiles.
Therefore, Respondent’s use of the <gemtiles.com>
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 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. DECISIONHaving 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 <gemtiles.com> be TRANSFERRED from Respondent to
Complainant. Sandra Franklin, PanelistDated:
December 18, 2002
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