Generic Top Level Domain Name (gTLD) Decisions

DECISION

Conwest Resources, Inc. v. Erotica

Claim Number: FA0203000105955

PARTIES

Complainant is Conwest Resources, Inc., San Francisco, CA (“Complainant”).  Respondent is Erotica, Hamburg, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

Judge Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

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

On March 20, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <falconpump.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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@falconpump.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 April 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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

1. The disputed domain name <falconpump.com> is confusingly similar to Complainant’s FALCON mark.

2. The original owner of the registration of the disputed domain name purportedly transferred it to current Respondent, yet the original owner and Respondent have the same e-mail addresses.  This activity by Respondent impedes Complainant’s ability to enforce its rights and is evidence that Respondent does not have legitimate rights to the disputed domain name.

3. Respondent has used a confusingly similar domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s FALCON mark as to the source, sponsorship, affiliation, or endorsements of Respondent’s website.  Therefore, Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant owns two Federal Registrations of the FALCON mark (Reg. Nos. 1,986,918 and 1,991,036, registered on July 16, 1996 and August 6, 1996 respectively).  As early as 1977, Complainant and predecessor-in-interest adopted and began using the FALCON mark in connection with gay-themed adult motion pictures and related merchandise.  Complainant owns the registrations of more than fifty domain names that incorporate the FALCON mark, including <falconstudios.com>.  Since March 1997, Complainant has been the exclusive worldwide licensee authorized to use the FALCON mark in connection with penis enlargement pumps.

Respondent registered <falconpump.com> on February 29, 2000.  Respondendent uses the website connected with the disputed domain name to sell penis enlargement pumps that compete directly with Complainant’s business.  Prior to transferring the disputed domain name registration to Respondent, the original administration contact “T. Black” informed Complainant that it had “offers from other companies to sell this domain name and I may do just sell my domain.”  Before the transfer, T. Black’s e-mail was “service@drjoelpumps.com” and Respondent is currently the registrant of <drjoelpumps.com> and currently uses “service@drjoelpumps.com.”  Therefore, upon information and belief, Complainant asserts that Respondent and T. Black are one and the same.

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 its rights to the FALCON mark through registration with the United States Patent and Trademark Office and subsequent continuous use.  Even though Complainant’s mark is not registered in Respondent’s country, the fact that it is registered with the USPTO satisfies the requirement necessary for Complainant to establish its rights to the FALCON mark.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).  

The disputed domain name <falconpump.com> is confusingly similar to Complainant’s FALCON mark.  The disputed domain name incorporates Complainant’s mark in its entirety and merely adds the generic term “pump.”  This minor change does not change the overall impression of the disputed domain name and therefore, the disputed domain name and Complainant’s mark are confusingly similar.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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 the Complainant combined with a generic word or term).  The disputed domain name <falconpump.com> is even more confusingly similar when it is considered that Complainant’s mark is associated with the term “pump.”  See 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); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark)

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

Rights or Legitimate Interests

Respondent has not filed a Response.  Thus, the Panel may conclude that Respondent has no rights or legitimate interests in <falconpump.com>.  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).  Since a Response was not filed, the Panel will presume that all allegations in the Complaint are true.  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 uses the confusingly similar domain name in connection with a website that offers competing goods and services.  This activity by Respondent is not considered a bona fide use pursuant to Policy ¶ 4(c)(i).  See Chip Merchant, 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 Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

The only evidence presented describes Respondent as “T. Black,” “drjoelpumps.com,” and “Erotica.”  Since Respondent has not presented any evidence that it is commonly known as <falconpump.com>, Respondent has failed to satisfy Policy ¶ 4(c)(ii).  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).

Respondent’s use of a confusingly similar domain name that is connected with a website that offers competing products and services is not a legitimate noncommercial or fair use of <falconpump.com> pursuant to Polcy ¶ 4(c)(iii).  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); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

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

Registration and Use in Bad Faith

Respondent registered a confusingly similar domain name that incorporates Complainant’s FALCON mark in its entirety and adds the generic term “pump,” a term that is associated with Complainant’s products.  Because Respondent uses the disputed domain name to promote competing products and services, the Panel may infer that Respondent knew that the disputed domain name would cause confusion.  Therefore, Respondent registered the disputed domain name in bad faith.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s FALCON mark as to the source, sponsorship, affiliation, or endorsements of Respondent’s website.  Therefore, Respondent has used the disputed domain name in bad faith pursuant to 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).

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 should be hereby granted.

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: April 29, 2002

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