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Generic Top Level Domain Name (gTLD) Decisions |
The United States Shoe Corporation v.
Party Night Inc. a/k/a Peter Carrington
Claim
Number: FA0309000197982
Complainant is Susan Mack, of The United States Shoe
Corporation, Port Washington, NY, USA (“Complainant”) represented by Karen K. Gaunt, of Keating Muething &
Klekamp P.L.L., 1400
Provident Tower, One East Fourth Street, Cincinnati, OH 45202
Respondent is Party Night Inc.,
a/k/a Peter Carrington, Jan Luykenstraat 58, 1071 CS Amsterdam, Netherlands (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <eyemedvisoncare.com>, registered with Key-Systems
GmbH d/b/a/ Domain Discount 24.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 23, 2003;
the Forum received a hard copy of the
Complaint on September 25, 2003.
On
September 25, 2003, Key-Systems confirmed by e-mail to the Forum that the
domain name <eyemedvisoncare.com> is registered with Key-Systems
and that Respondent is the current registrant of the name. Key-Systems has
verified that Respondent
is bound by the Key-Systems 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
September 25, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 15, 2003 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@eyemedvisoncare.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
October 28, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <eyemedvisoncare.com>
domain name is confusingly similar to Complainant’s EYEMED VISION CARE mark.
2. Respondent does not have any rights or
legitimate interests in the <eyemedvisoncare.com> domain name.
3. Respondent registered and used the <eyemedvisoncare.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
United States Shoe Corporation, is the owner of five United States Trademark
Registrations upon which the Complaint
is based. Specifically, Complainant is the owner of U.S. Trademark
Registration Nos. 2,367,100 and 2,180,437 for its EYEMED VISION CARE
trademark. These registrations were
issued to Complainant on November 23,1998 and June 23, 1997, respectively. These trademarks are registered for services
relating to eye care and eye health.
Complainant has been using these related marks in commerce as early as
1997. Complainant also is the owner of
the domain name located at <eyemedvisioncare.com>.
Respondent, Party
Night Inc. aka “Peter Carrington”, registered the disputed domain name <eyemedvisoncare.com>
on November 16, 2002. Respondent is
using the domain name to redirect Internet users to a pornographic website
located at <amaturevideos.nl>.
Respondent has failed to Respond to this Complaint.
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 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 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.
Complainant has
established rights in the mark EYEMED VISION CARE through registration with the
United States Patent and Trademark
Office (“USPTO”) and continuous use in
commerce since 1997.
The domain name
in dispute, <eyemedvisoncare.com>, is nothing more than a
misspelling of Complainant’s federally registered EYEMED VISION CARE
trademark. Respondent has merely
omitted the “i” from “vision”. The
intentional misspelling is obvious and apparent, as “vison” has no meaning of
any kind, nor does the combined term “visoncare”. Complainant is the owner of the legitimate domain name at
<eyemedvisioncare.com>.
Respondent’s domain name is nearly identical to Complainant’s registered
EYEMED VISION CARE mark, and is certainly confusingly similar. It is established that the omission of a
single letter from a trademark does not extend the word or phrase outside the
bounds of the
protected rights afforded it through the USPTO. See Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that omitting one letter from
Complainant’s trademark rendered the domain name
confusingly similar to
Complainant’s 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).
Therefore, Complainant has successfully established Policy ¶ 4(a)(i).
The fact that Respondent
has failed to respond to this Complaint evidences Respondent’s lack of rights
or legitimate interests in
the disputed domain name. See Am. Online, Inc.
v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where Respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Furthermore,
Respondent registered the domain name, <eyemedvisoncare.com>, on
November 16, 2002, many years after Complainant commenced use of its
trademark. Respondent is not commonly
known by, doing business as, or in any way providing any goods or services
relating to the name “Eyemed
Vison Care”.
In fact, as provided by the domain name registrar Key-Systems,
Respondent does business as “Party Night Inc.”
Respondent is not affiliated with, licensed by or authorized in any manner to use Complainant’s EYEMED
VISION CARE trademark. Thus, Respondent
has no rights in the domain name with respect to Policy ¶ 4(c)(ii). See Allen-Edmonds Shoe Corp. v. Takin’
Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a
specific agreement between the parties, the reseller does not have the
right to
use the licensor’s trademark as a domain name”); see also Jaccard Corp. v GDC, FA 152463
(Nat. Arb. Forum June 20, 2003) (stating that as there was “no evidence of an agreement between
Complainant and Respondent whereby Respondent has either or both of a privilege
to have registered, and a privilege to use, the mark that is the subject of one
or more of Complainant's trademarks as a domain name”
Respondent had no rights
or legitimate interests in the disputed domain name).
Respondent’s
domain name takes advantage of unsuspecting Internet users seeking
Complainant’s website by redirecting those who mispel
“vision” to a
pornographic website located at <amaturevideos.nl>. It is established that using a registered
trademark, or a misspelling thereof, in a domain name to redirect users to
pornographic
websites does not create rights or legitimate interests in the
domain name because it is not a bona fide offering of goods or services
or a
legitimate noncommercial or fair use of the domain name. See MatchNet plc v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that it is not a bona fide offering of goods and
services to use a domain name for commerical
gain by attracting internet users
to another site offering adult content and/or sexually explicit material, where
such use is calculated
to mislead users and tarnish and dilute the complaining
party’s trademark); see also Sony Kabushiki Kaisha a/k/a Sony Corp. v.
Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16,
2002) (finding that Respondent’s use of its domain name in order to divert
Internet users to
a website that offers search engine services and links to
adult-oriented websites was not considered to be in connection with a bona
fide
offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy).
Therefore, Complainant has successfully established Policy ¶ 4(a)(ii).
Using a domain
name that is confusingly similar to a registered trademark in order to divert
Internet users to pornographic web sites
is considered to be evidence of bad
faith registration and use. See Ty,
Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that linking
the domain names in question to graphic adult-orientated websites is evidence
of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO
Apr. 26, 2000) (finding that “this association with a pornographic web site can
itself constitute bad faith”).
Furthermore,
Respondent has engaged in the practice of “typosquatting.” In this case, Respondent has merely omitted
the “i” from “vision”, which appeared as a less than coincidental arrangement
of words
coinciding with Complainant’s trademark. Respondent’s typosquatting is evidence of bad faith. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is inherently parasitic and of
itself evidence of bad faith”); see also Black &
Decker Corp. v. Azra Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget
to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith).
Therefore, Complainant has successfully established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <eyemedvisoncare.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
November 5, 2003
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