DECISION

Deluxe Corporation v. American Medical

Claim Number: FA0203000105217

PARTIES

Complainant is Deluxe Corporation, Shoreview, MN (“Complainant”) represented by Linda M. Byrne, of Merchant & Gould P.C.  Respondent is American Medical, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

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 P. Buchele as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 27, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.

On March 4, 2002, Tucows confirmed by e-mail to the Forum that the domain name <deluxforms.com> is  registered with Tucows and that Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 March 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 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@deluxforms.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 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed  James P. Buchele 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <deluxforms.com> domain name is confusingly similar to Complainant's DELUXE mark and <deluxeforms.com> domain name.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the DELUXE mark in relation to its check printing service and related products since 1915.  Complainant also provides business forms, labels, self-inking stamps, fraud prevention services, and customer retention programs under the DELUXE mark.  Complainant owns several United States Federal Trademark Registrations for the DELUXE mark including Reg. No. 2,379,596.

Complainant has an affiliate program where a third party entity can link its website to Complainant’s <deluxeforms.com> website, and when a customer purchases a business form through that third party’s affiliated website, that third party earns a commission for the sale.  Potential affiliates must fill out an application and sign an agreement that expressly states that the affiliate will not attempt to register any confusingly similar trademarks, service marks, logos, trade names or domain names.

Respondent applied to be an affiliate of Complainant in June of 2001.  Respondent told Complainant that it was doing business at <natprom.com>, and did so through June and July of 2001. 

In November of 2000 the disputed domain name <deluxforms.com> was registered, and in August 2001 Complainant noticed that Respondent’s tracking identifier was showing a high volume of sales at <deluxforms.com>.  Complainant stopped paying Respondent its commission and Respondent redirected the disputed domain name from Complainant’s <deluxeforms.com> domain to <clicksearch.com> which links to a search engine at <turbofind.com>.  Complainant was able to trace Respondent’s identity to one Michael Torres, a known cybersquatter who has engaged in a pattern of registering famous trademarks for his own commercial gain.

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 rights in its DELUXE mark because it has registered the mark with the United States Patent and Trademark Office and used it continuously since 1915.  Furthermore, Respondent’s <deluxforms.com> domain name is confusingly similar to Complainant’s DELUXE mark because its merely a misspelling of Complainant’s trademark with the generic term “forms” appended to it.  Neither the addition of a generic term to a well-known mark nor the misspelling of a word create a distinct mark capable of overcoming a  claim of confusing  similarity.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant). 

Moreover, Complainant has done business under the name DELUXEFORMS.COM in relation to its online sales and affiliate program.  Complainant therefore has established a significant Internet presence and common law rights to the name DELUXEFORMS.COM.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Respondent’s <deluxforms.com> domain name is confusingly similar to Complainant’s common law DELUXEFORMS.COM mark because it incorporates the entirety of Complainant’s mark and merely deletes the “e” in DELUXE.  Domain names that are misspellings of another’s trademark do not create distinct marks capable of overcoming a claim of confusing similarity.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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).

Respondent’s <deluxforms.com> domain name is confusingly similar to Complainant’s mark and therefore is attracting Complainant’s customers to Respondent’s website.  The use of a domain name to divert Complainant’s customers to Respondent’s website by creating a likelihood of confusion is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  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 Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Respondent, known as “American Medical,” is not commonly known as <deluxforms.com> 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Furthermore, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name because its primary purpose for registering and using the domain name is to mislead and divert Internet traffic intended for Complainant to Respondent’s domain name for commercial gain.  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).  Furthermore, Respondent is currently diverting Internet traffic to a search engine that is not connected with Complainant’s business in any way.  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

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

Registration and Use in Bad Faith

Respondent has been identified by Complainant as a known cybersquatter who routinely registers domain names that infringe upon the trademarks of others.  In the absence of a contrary clain, the Panel may accept Complainant’s assertion as true.  See Talk City 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).  Therefore, Respondent’s registration of <deluxforms.com> is evidence of Respondent’s continuing pattern of conduct and bad faith pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites).

Respondent’s registration of the disputed domain name was done to intentionally attract Complainant’s customers, without Complainant’s permission, for Respondent’s commercial gain by creating a likelihood of confusion as to source, sponsorship and affiliation of the domain name, which is bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s good will and attract Internet users to Respondent’s website); 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 the requested relief shall be hereby granted.

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

James P. Buchele, Panelist

Dated:  April 1, 2002

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