DECISION

Stirling Group (Asia Pacific) Pty Ltd. v. SKRaM Internet Services

Claim Number: FA0202000104678

PARTIES

Complainant is Stirling Group (Asia Pacific) Pty Ltd, Palm Beach, Queensland, AUSTRALIA (“Complainant”) represented by Jason Goldschmied, of Miner Ellison - Gold Coast.  Respondent is SKRaM Internet Services, North Hollywood, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <voodoodolls.com>, registered with Verisign - Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 14, 2002; the Forum received a hard copy of the Complaint on February 20, 2002.

On February 20, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <voodoodolls.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, 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 February 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 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@voodoodolls.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 March 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations:

1. The domain name in question is identical to Complainant’s mark, which is registered in numerous countries.

2. Respondent has no rights or legitimate interest in the domain name in question.

3. Respondent is not commonly known by the domain name.

4. Respondent is not making, and has not made, any attempt to use the domain name, either for Respondent’s own personal use or for a commercial use. 

5. Respondent registered and used the domain name in question in bad faith.

6. All recent attempts to communicate with Respondent have been unsuccessful.  Respondent’s contact details held by the Service Provider are either outdated or false.

B. Respondent did not file a Response in this proceeding.

FINDINGS

Complainant is the Registered Trademark owner of VOODOO DOLLS and variations thereof in numerous countries as set out below:

	Mark	Country	TM numbers	Goods & Services with which the Mark is used
(a)	VOODOO DOLLS	Australia	564210	Class 25; women’s clothing including swimwear, beachwear and casual wear; hats; caps and all other goods in this class excluding hosiery, briefs, socks, underwear, lingerie and intimate apparel
(b)			702429	Classes 9, 14, 18, 26; Sunglasses and other spectacles; frames for sunglasses and spectacles; jewelry, including bracelets, necklaces and earrings, watches, precious stones
(c)			832494	Class 28; Gymnastic and sporting articles in this class including surfboards, surfskis, sailboards, body boards, long boards, malibu boards, snow boards, skate boards, skis; leg ropes and tethers for boards; waxes for boards and skis
(d)	VOODOO DOLLS	Japan	3308371	Class 25
(e)			4381810	Class 14 & 18
(f)	VOODOO DOLLS	Brazil	819782289	Class 25
(g)	VOODOO DOLLS	Argentina	1674,606	Class 25
(h)	VOODOO DOLLS	New Zealand	227058	Class 18; clothing, footwear, headgear; not including hosiery, briefs, socks, underwear, lingerie and intimate apparel
(i)			311223	jewelry including bracelets, necklaces and earrings, watches, precious stones
(j)			311224	Backpacks including school backpacks; briefcases, wallets, waist bags, carry bags, sports bags, purses, key rings in this class; other bags in this class
(k)	VOODOO DOLLS	Indonesia	466261	Class 25
(l)			458911	Class 14
(m)			458912	Class 18
(n)	VOODOO DOLLS	Canada	466684	Shirts, T-shirts, sweat shirts, blouses, singlets, tops, shorts, board shorts, walk shorts, tracksuits, tracksuit tops, tracksuit pants, trousers, jackets, dresses, skirts, swimwear, hats, caps, shoes and sandals.
(o)	VOODOO DOLLS	Peru	43934	Class 25
(p)	VOODOO DOLLS	South Africa	95/7741	Class 25
(q)	VOODOO DOLLS	Fiji	75/97	National class 37
(r)			76/97	National class 38
(s)	VOODOO DOLLS	United States	IC 014. US 002 027 028 050	jewelry, namely, bracelets, necklaces, earrings and watches and precious gemstones
(t)			IC 018. US 001 002 003 002 041	backpacks, briefcases, wallets, waist bags, carry on bags all purpose sports bags and purses
(u)			IC 025. US 022 039	clothing; namely, shirts including T-shirts, and sweat shirts, shorts including board shorts and walk shorts, tracksuit tops, tracksuit pants, sweaters, trousers, dresses skirts, swimsuits, hats, caps,  footwear but not including hosiery, briefs, socks, underwear, lingerie and intimate apparel.

Complainant’s predecessor in interest registered the VOODOO DOLLS mark in Australia in or about 1991.  Throughout the past ten years Complainant has registered the mark in several other countries. 

Respondent registered the domain name on October 28, 1997.  Respondent has not developed a website in connection with the domain name.  The domain name currently features a generic “welcome to the future website of” web page provided by the web host.

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 to and/or Confusingly Similar

For the reasons set forth above, Complainant owns valid and enforceable rights in the mark VOODOO DOLLS, acquired well before Respondent registered the domain name.  Therefore, Complainant has established its rights under Policy ¶ 4(a)(i).

Respondent’s domain name <voodoodolls.com> is identical to Complainant’s VOODOO DOLLS mark.  The omission of the space from Complainant’s VOODOO DOLLS mark and the generic top-level domain “.com” are disregarded when making a determination of identical or confusingly similar.  See Amherst  v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration); 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).

Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the trademark that is contained in its entirety in the domain name in dispute.  Respondent has failed to submit a response to refute Complainant's allegations that Respondent lacks any rights or legitimate interests in the <voodoodolls.com> domain name.  In the absence of a Response, the Panel is permitted to make a determination that Respondent lacks rights or legitimate interests based on Complainant's allegations.  See e.g. 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).

Respondent has not made any use of the <voodoodolls.com> domain name and holding it without making a use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  Nor could Respondent's non-use demonstrate a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).  Rather, Respondent's passive holding of the disputed domain name creates further evidence that Respondent lacks rights to or legitimate interests in the domain name.  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

Moreover, Complainant has demonstrated that it has not authorized Respondent to use its mark and that the Respondent could not be known by Complainant's VOODOO DOLLS mark pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

For all the forgoing reasons, the Panel finds that Complainant has made the necessary showing to prevail under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the domain name in issue in bad faith.  Respondent has not connected an active website to the domain name in question.  In certain circumstances, such passive holding of a domain name is evidence of bad faith registration and use.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I] t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Furthermore, Complainant has shown that Respondent acted in bad faith by providing incorrect contact information to the registrar.  See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).

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

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: March 28, 2002.

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