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Generic Top Level Domain Name (gTLD) Decisions |
Moldflow Corporation v. Robert Swanland
Claim Number: FA0204000109026
PARTIES
Complainant
is Moldflow Corporation, Wayland, MA
(“Complainant”) represented by Roland H.
Schwillinski, of Goodwin Procter LLP. Respondent is Robert Swanland, Riverside, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com>, registered with Network Solutions, 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
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 1, 2002; the Forum received
a hard copy of the
Complaint on April 4, 2002.
On
April 4, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain names <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> are registered with Network Solutions,
Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that
Respondent is bound by the 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
April 5, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 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@plasticszone.info, postmaster@plasticzone.info,
postmaster@plasticzone.biz, and postmaster@plasticzone.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
May 7, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Judge
Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> domain names are identical or confusingly
similar to Complainant's PLASTICSZONE mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Complainant is the world’s leading
provider of software products and services for optimizing the design, analysis
and manufacture
of injection molded plastic products. Major manufacturers throughout the world use Complainant’s
products to address design issues and maximize productivity during the
manufacturing process. Complainant
registered the PLASTICSZONE mark with the United States Patent and Trademark
Office as Registration Number 2,497,789 on
October 16, 2001. Complainant has used the PLASTICSZONE mark
in commerce since May 2000 in relation to its <plasticszones.com> website. Complainant registered its domain name on
December 31, 1999. Complainant uses the
website to promote sales of its product and services. The website allows the user to register for Complainant’s
training courses, access consulting services, and analyze plastic part design
using Complainant’s software.
Complainant has invested over $80,000 advertising and promoting its
PLASTICSZONE mark. Complainant’s
website has over 5,400 registered users and receives an average of 95,000 hits
from another 2,500 users every month.
Respondent registered the disputed domain
names on November 29, 2001, October 4, 2001, and May 24, 1999. Respondent offered to transfer <plasticzone.com> to Complainant for
a sum in excess of its out-of-pocket expenses in July of 2000, claiming that it
had invested thousands of
dollars creating an identity under the name
PLASTICZONE. Respondent claimed that it
was planning to start a design and engineering consulting website at the domain
name for the plastics industry.
Respondent however, has not developed a website at <plasticzone.com> even though it has
held the domain name since May 1999.
Respondent proceeded to register the other three infringing domain names
after its communications with Complainant regarding <plasticzone.com> in the fall of 2001 with full knowledge of
Complainant’s rights in the PLASTICSZONE mark.
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 that it has
rights in the PLASTICSZONE mark through registration and continuous use. Furthermore, Respondent’s <plasticszone.info> domain name is
identical to Complainant’s PLASTICSZONE mark because it incorporates the
entirety of Complainant’s mark and merely
adds the generic top-level domain
“.info.” The addition of a generic
top-level domain name is irrelevant when determining whether a domain name is
identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
(gTLD) “.com” after the name POMELLATO is not
relevant); see also 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.’”).
Respondent’s <plasticzone.info>, <plasticzone.biz>,
and <plasticzone.com> are
confusingly similar to Complainant’s mark because they incorporate the entirety
of Complainant’s mark and merely omit the
“s” from “plastics.” The omission of a single letter from
another’s mark is not enough to create a distinct mark capable of overcoming a
claim of confusing
similarity. See Universal City Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the
Complainant’s UNIVERSAL STUDIOS STORE mark did not
change the overall
impression of the mark and thus made the disputed domain name confusingly
similar to it); see also 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).
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 names. 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 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”).
Respondent’s domain names are confusingly
similar to Complainant’s and therefore will confuse the Internet user as to the
source,
sponsorship, and affiliation of Respondent’s website. Complainant has provided evidence that
Respondent planned to start a business similar to Complainant’s and use the
domain names for
websites related to that business. It has been established that the use of a confusingly similar
domain name with the intent to provide services that compete with Complainant’s
services is not a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i); nor is it a legitimate noncommercial or
fair use pursuant to Policy ¶
4(c)(iii). See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb.
Forum Nov. 7, 2000) (inferring that Respondent registered the domain name
<householdbank.com>, which
incorporates Complainants HOUSEHOLD BANK mark,
with hopes of attracting Complainant’s customers and thus finding no rights or
legitimate
interests); 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); see also 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).
There is no evidence on record that
Respondent is commonly known by <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, or
<plasticzone.com>, and
therefore Respondent has no rights or legitimate interests in the disputed
domain names pursuant to 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because
it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering
of goods and services or for a legitimate noncommercial or fair
use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has attempted to sell the <plasticzone.com> domain name for
hundreds of thousands of dollars. This
is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded,
are evidence of bad faith”); see also Little Six,
Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith).
Furthermore, Respondent’s registration of
numerous domain names that are confusingly similar and identical to
Complainant’s mark is
a pattern of conduct that is evidence of 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 Caterpillar Inc. v. Miguel Miyar
Jr., FA 95623 (Nat. Arb.
Forum Dec. 14, 2000) (finding that registering multiple domain names in
a short time frame indicates an intention to prevent the mark holder from using
its mark and provides evidence
of a pattern of conduct).
Respondent registered three of the
disputed domain names after offering <plasticzone.com>
for sale to Complainant. Therefore,
Respondent had actual notice of Complainant’s rights in the PLASTICSZONE mark
and its registration of confusingly similar
domain names despite this fact is
evidence of 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"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration).
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 names <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> be
transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
May 13, 2002
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