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Generic Top Level Domain Name (gTLD) Decisions |
Circuit City
Stores West Coast, Inc. & Circuit City Stores, Inc. v. circutcity.com
Claim
Number: FA0302000145233
Complainant is
Circuit City Stores West Coast, Inc., Greenwood Village, CO, USA (“Complainant”)
represented by Robert M. Tyler, of McGuire Woods LLP. Respondent
is Circutcity.com, Gdynsk, POLAND (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <circutcity.com>, registered with Tucows,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 10, 2003; the
Forum received a hard copy of the
Complaint on February 18, 2003.
On
February 11, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <circutcity.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
February 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 11, 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@circutcity.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 13, 2003, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <circutcity.com>
domain name is confusingly similar to Complainant’s CIRCUIT CITY mark.
2. Respondent does not have any rights or
legitimate interests in the <circutcity.com> domain name.
3. Respondent registered and used the <circutcity.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous marks for CIRCUIT CITY with the United States Patent and
Trademark Office (“USPTO”), including Reg. Nos.1,121,646
(registered July 3,
1979), 1,369,581 (registered November
5, 1985) and 2,626,493 (registered September 24, 2002). Complainant uses the
marks in relation to its sale of consumer electronics,
and related goods and
services since 1977. Complainant has operated a website located at
<circuitcity.com> since December 1994.
Respondent
registered the <circutcity.com> domain name on December 9, 1998.
Respondent is using the disputed domain name to redirect Internet traffic to
two websites, <megago.com>,
a commercial search engine, and
<89.com>, an online pornographic website.
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 that it has rights in the CIRCUIT CITY mark through numerous
trademark registrations with the USPTO and
regular use in commerce since 1977.
Respondent’s <circutcity.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name incorporates Complainant’s entire mark
and simply deletes the
second letter “i” from the mark. This small change, which results in a
misspelling of Complainant’s famous
mark, does not diminish the confusing
similarity between the CIRCUIT CITY mark and the <circutcity.com>
domain name. 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 Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) (finding that the domain names, <davemathewsband.com> and
<davemattewsband.com>,
are common misspellings and therefore confusingly
similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel is permitted
to accept all reasonable allegations
and inferences in the Complaint as true. See
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 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).
Furthermore, the
Panel is permitted to presume that Respondent lacks any rights or legitimate
interests in the disputed domain name
because of Respondent’s failure to submit
a Response. See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because the Respondent
never submitted a response nor provided the Panel with evidence to suggest
otherwise); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the domain name).
Respondent is
using the <circutcity.com> domain name to divert Internet users to
<megago.com> and <89.com>, which are a commercial search engine and
a pornographic
website, respectively. The use of a confusingly similar domain
name to divert Internet traffic to either website is neither a bona
fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
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 N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum
Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name
to divert Internet users
to its competing website); see also Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the
Respondent had no rights or legitimate interests in the domain names
<chargergirls.com>
and <chargergirls.net> where the Respondent
linked these domain names to its pornographic website).
Respondent has
not come forward with any proof and there is no evidence in the record to
establish that Respondent is commonly known
by CIRCUTCITY or <circutcity.com>.
Therefore, in the absence of a Response, the Panel may infer that Respondent
has no rights or legitimate interests in the disputed
domain name pursuant to
Policy ¶ 4(c)(ii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that Respondent was not commonly known by the domain name
<greatsouthernwood.com>
where Respondent linked the domain name to
<bestoftheweb.com>); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel may
infer that Respondent knew of Complainant’s famous mark when Respondent
registered the <circutcity.com> domain name because the disputed
domain name is a misspelling of Complainant’s mark. The registration of a
domain name with knowledge
of Complainant’s rights in its mark is evidence of
bad faith pursuant to Policy ¶ 4(a)(iii). 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 Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of
Complainant’s trademarks, actually or constructively”).
Respondent is
engaged in a practice called “typosquatting,” which is the practice of
diverting Internet users who misspell Complainant’s
mark from Complainant’s
website for Respondent’s commercial gain. This practice of “typosquatting” has
been recognized as a bad faith
use of a domain name under the UDRP pursuant to
Policy ¶ 4(b)(iv). See e.g. Hewlett-Packard Co. v. Zuccarini,
FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a
misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and
<davemattewsband.com>, common misspellings
of DAVE MATTHEWS BAND to
Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <circutcity.com> domain name be TRANSFERRED
from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 24, 2003
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