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Generic Top Level Domain Name (gTLD) Decisions |
Travant Solutions, Inc. v. Don Cole
Claim
Number: FA0310000203177
Complainant is Travant Solutions, Inc., Vernon Hills,
IL (“Complainant”) represented by Judith
L. Grubner, of Michael Best & Friedrich LLC., 401
N. Michigan Ave. Ste. 1900, Chicago, IL 60611-4212. Respondent is Don Cole,
2988 Alexander Road, Laguna Beach, CA 92651 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <travant.com>, registered with Dotster.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 14, 2003; the
Forum received a hard copy of the
Complaint on October 15, 2003.
On
October 15, 2003, Dotster confirmed by e-mail to the Forum that the domain name
<travant.com> is registered with Dotster and that Respondent is
the current registrant of the name. Dotster has verified that Respondent is
bound
by the Dotster 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
October 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 13, 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@travant.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
November 25, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Louis E. Condon 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 <travant.com>
domain name is confusingly similar to Complainant’s TRAVANT SOLUTIONS mark.
2. Respondent does not have any rights or
legitimate interests in the <travant.com> domain name.
3. Respondent registered and used the <travant.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
filed an application for the TRAVANT SOLUTIONS mark with the United States
Patent and Trademark Office on June 19, 2002,
and successfully registered the
mark on October 14, 2003 (Reg. No. 2,774,168).
Complainant began using the mark in commerce on August 11, 2002 in
relation to computer technology, development, and networking services.
The disputed
domain name was registered on December 10, 1999 by David Mah. Complainant asserts that, on or around June
13, 2003, David Mah transferred the domain name to Respondent. Respondent has used the domain name to
redirect users to a website located at <pinnica.com>, which advertises
computer software
development and related services, which are offered in
competition with Complainant. Text on
the website at <pinnica.com> proclaims that that the website operator
changed its business name on January 1, 2003 from
Pinnica Corporation to
Travant Technology Solutions. There is
no other evidence in the record that such a name change actually occurred.
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 TRAVANT SOLUTIONS mark through registration and use
since 2002. Although the domain name
was registered before Complainant acquired rights in the name, the plain
meaning of Policy ¶ 4(a)(i) indicates
that Complainant’s rights in the mark do
not have to precede Respondent’s domain name registration. This is inferred through the absence of
language to the contrary, such as that supplied in Policy ¶ 4(a)(iii), which
sets a specific
time requirement that bad faith be demonstrated upon
registration of the domain name.
The issue of
whether a domain name is confusingly similar to a registered mark requires only
a low threshold of proof. See Desktop Media, Inc. v. Desktop Media, Inc.,
FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the
domain name dispute resolution process[,] a low threshold
of proof is all that
is required to meet the first element”).
Furthermore,
Complainant had rights in the trademark at the time the domain name was
transferred to Respondent. Respondent’s domain
name merely deletes SOLUTIONS
from Complainant’s TRAVANT SOLUTIONS mark, thereby establishing that the
disputed domain name is confusingly
similar to the mark pursuant to Policy ¶
4(a)(i). See Asprey & Garrard
Ltd. v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to
Complainant’s ASPREY &
GARRARD and MISS ASPREY marks); see also WestJet Air Center, Inc. v. West Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to Complainant’s
mark, where Complainant
holds the WEST JET AIR CENTER mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may draw adverse
inferences from Complainant’s allegations, without the benefit of a Response. See
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); see also Vertical Solutions
Mgmt., Inc. v. Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in
the allegations of Complainant to be deemed true); see
also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name, it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also 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).
There is
superficial evidence that Respondent might be known as “Travant Technology
Solutions”, but this evidence lacks credibility. Respondent’s domain name directs users to a website operating as
Pinnica Corporation, and Respondent has not provided the Panel with
any
evidence of a name change, such as a formal government registration. Therefore, Complainant has established that
Policy ¶ 4(c)(ii) does not apply to Respondent. See AT&T Corp. v. Domains by Brian Evans,
D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests
where Respondent did not provide any documentation on
the existence of its
alleged company that might show what the company’s business was, or how the
company’s years of existence, if
it ever existed, might mesh with Complainant’s
trademark claims).
Furthermore,
Respondent has not put forward any evidence that shows the domain name, which
infringes upon Complainant’s mark, is used
in connection with a bona fide
offering of goods or services, or a legitimate noncommercial or fair use of the
domain name pursuant
to Policy ¶¶ 4(a)(i) & (iii). See eBay Inc. v. Sunho Hong,
D2000-1633 (WIPO Jan. 18, 2001) ("use of complainant’s entire mark in
infringing domain names makes it difficult to infer a
legitimate use"); see
also Vestel Elektronik Sanayi ve
Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“merely registering the domain name is not sufficient to establish rights or
legitimate
interests for purposes of paragraph 4(a)(ii) of the Policy”); see
also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s
mark to market products that
compete with Complainant’s goods does not
constitute a bona fide offering of goods and services); see also Clear
Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum
Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no
rights or legitimate interests
in a domain name that utilized Complainant’s
mark for its competing website).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy ¶
4(a)(iii) requires Complainant to prove that the disputed domain name was both
registered and used in bad faith. The
examples of bad faith in Policy ¶ 4(b) deal specifically with the domain name’s
current registrant, not Respondent’s predecessor
or a prior registrant. Thus, the Panel finds that, in cases such as
this, where the domain name was transferred to a new registrant at a time when
the new
registrant’s registration of the domain name would be in bad faith, the
transfer is tantamount to a new registration and the “bad
faith” requirement of
Policy ¶ 4(a)(iii) can be proven against the current registrant. See Schmidheiny v. Weber, [2003] USCA3 36; 319 F.3d
581, 66 U.S.P.Q.2d 1062 (3d Cir. 2003) (holding that the “registration” of a domain name for the
purposes of the Anti-cybersquatting Consumer Protection Act includes both the
initial registration
of the domain name and the subsequent re-registration of
that domain name with a different registrar by a different registrant).
Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of
a competitor of Complainant,
and at the time of the domain name transfer, Respondent should have known of
Complainant’s rights in
the TRAVANT SOLUTIONS mark, particularly since
Complainant attempted to buy the domain name from the prior registrant. See
Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding that, given the competitive relationship between Complainant and
Respondent, Respondent
likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent,
Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <travant.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 6, 2003
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