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Generic Top Level Domain Name (gTLD) Decisions |
General
Ecology, Inc. v. Metcalf and Dekker c/o Infinetivity, Inc.
Claim
Number: FA0302000146569
Complainant is
General Ecology, Inc., Exton, PA (“Complainant”) represented
by Andrea C. Williams, of General Ecology, Inc.. Respondent is
Metcalf and Dekker, Burnsville, MN (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <seagull-4.com>, registered with Tucows,
Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 21, 2003; the
Forum received a hard copy of the
Complaint on February 24, 2003.
On
February 21, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <seagull-4.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 28, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 20, 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@seagull-4.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 10, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <seagull-4.com>
domain name is confusingly similar to Complainant’s SEAGULL and SEAGULL IV
marks.
2. Respondent does not have any rights or
legitimate interests in the <seagull-4.com>
domain name.
3. Respondent registered and used the <seagull-4.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
has used the SEAGULL and SEAGULL IV marks since 1973 in relation to
self-contained water purifiers.
Complainant sells its water purifiers in the United States, Japan,
Australia, Korea, Canada and Great Britain.
Complainant’s product is the only water purifier that meets the
Environmental Protection Agency’s Microbiological Purification Standards
for
all three classes of water-borne disease microorganisms without the use of
chemicals, hold times, electricity and wastewater.
Complainant
registered both marks with the United States Patent and Trademark Office. Complainant’s SEAGULL mark is Registration
Number 2,552,790, registered on March 26, 2002, and the SEAGULL IV mark is
Registration
Number 1,052,344, registered on November 6, 1976.
Respondent,
Metcalf and Dekker, registered the disputed domain name <seagull-4.com>
on April 22, 1998. Respondent was a
distributor of Complainant’s products until 1997 when Complainant terminated
Respondent’s status as an authorized
distributor of Complainant’s products. Respondent is a retail seller of water
filtration equipment and uses the disputed domain name as its homepage for
on-line sales of
its water filtration unit “The Purest One,” located at
<thepurestone.com>. Respondent’s product is not manufactured or licensed
by Complainant, nor has Complainant granted Respondent permission to use its
SEAGULL or SEAGULL IV marks for any purpose.
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 SEAGULL and SEAGULL IV marks through
registration with the U. S. Patent and
Trademark Office and use in commerce
since 1973 to identify its water filtration units.
Respondent’s
<seagull-4.com> domain name is confusingly similar to
Complainant’s SEAGULL and SEAGULL IV marks because it incorporates Complainant’s
entire
SEAGULL mark and merely changes the Roman numeral “IV” of Complainant’s
mark to the numeral “4.” The
replacement of “IV” with “4” does not add any distinct characteristics because
SEAGULL is still the prominent element of the domain
name and Internet users
seeking Complainant will associate both “IV” and “4” with Complainant. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar even though the mark
MICROSOFT is abbreviated); see also Down
East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum
Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly
similar to Complainant’s
common law mark DOWN EAST, THE MAGAZINE OF MAINE); see
also Oxygen Media, LLC v. Primary
Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name
<0xygen.com>, with zero in place of letter “O,” “appears calculated
to
trade on Complainant’s name by exploiting likely mistakes by users when
entering the url address”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, 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) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
to be deemed true); see
also 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”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance
that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the <seagull-4.com> domain name to divert Internet users to
its <thepurestone.com> website where it sells its own water filter “The
Pure One.” Respondent is in the same
market as Complainant and thus its product competes with Complainant’s SEAGULL
and SEAGULL IV water purifiers. The use
of a confusingly similar domain name to sell products that compete with Complainant’s
products is not considered to be a bona
fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use
pursuant to Policy
¶ 4(c)(iii). See 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 MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using the
Complainant’s mark by redirecting Internet traffic to its own website).
Respondent is
known to this Panel as Metcalf and Dekker.
There is no evidence on record that Respondent is commonly known as
SEAGULL, SEAGULL 4, or <seagull-4.com>. There is, however, evidence on record that Respondent was
terminated as a distributor of Complainant’s SEAGULL products. Thus, the Panel infers that Respondent does
not have any rights or legitimate interests in the disputed domain name pursuant
to Policy
¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was
on notice of Complainant’s rights in the SEAGULL and SEAGULL IV marks when it
registered the <seagull-4.com> domain name because Respondent was
once a distributor of Complainant’s products.
Registration of an infringing domain name with knowledge of
Complainant’s rights is evidence of bad faith registration pursuant to
Policy ¶
4(a)(iii). See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Nat.
Arb. Forum Apr. 27, 2000) (finding bad faith where Respondent registered the
domain names six months after Respondent’s
distributor agreement with
Complainant was terminated); see also Great Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Nat.
Arb. Forum Dec. 7, 2000) (Respondent’s acquisition of the domain names after
its authorization as a retailer was
terminated raises a presumption of bad
faith); 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
using the <seagull-4.com> domain name to divert Internet users to
its own competing website. The disputed
domain name resolves at <thepurestone.com> and offers Respondent’s water
purification products for sale. The use
of an infringing domain name to sell competing products is evidence of bad
faith registration and use pursuant to Policy ¶
4(b)(iii). See 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 Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
Thus, 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 <seagull-4.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
April 11, 2003
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