DECISION

Mayers Enterprises Inc. d/b/a 5DollarHosting.com v 5 Dollar Hosting c/o Zeeshan Ahmed

Claim Number: FA0302000146945

PARTIES

Complainant is Mayers Enterprises Inc. d/b/a 5DollarHosting.com, Rockledge, FL, USA (“Complainant”) represented by Craig Mayers. Respondent is Zeeshan Ahmed 5DH.com, Karachi, PAKISTAN (“Respondent”) represented by Zeeshan Ahmed.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <5dollar-hosting.com>, registered with Network Solutions, Inc., <5dh.com>, registered with Onlinenic, Inc. and <5dollar-hostings.com>, registered with Gandi.

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.

Robert T. Pfeuffer, Senior District Judge, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 27, 2003; the Forum received a hard copy of the Complaint on March 3, 2003.

On March 3, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <5dollar-hosting.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. On March 4, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <5dh.com> is registered with Onlinenic, Inc. and that the Respondent is the current registrant of the name. On March 10, 2003, Gandi confirmed by e-mail to the Forum that the domain name <5dollar-hostings.com> is registered with Gandi and that the Respondent is the current registrant of the name. Network Solutions, Inc., Onlinenic, Inc. and Gandi have verified that Respondent is bound by their respective registration agreements and that Respondent 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 March 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 31, 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@5dollar-hosting.com, postmaster@5dh.com and postmaster@5dollar-hostings.com by e-mail.

An untimely Response was received on April 1, 2003. Because the response was not filed in a timely manner and mitigating circumstances were not submitted by Respondent to excuse any late filing, the Panel chooses to disregard the Respondent’s untimely response.  See UFCW Int’l Union v. Union Automation, FA 94665 (Nat. Arb. Forum June 8, 2000) (holding that an untimely Response without Motion or Affidavit does not controvert Complainant’s allegations and proof and all reasonable inferences of fact in the allegations of the Complaint will be taken as true); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (holding that without an adequate and timely filed Response, all reasonable inferences of fact in the allegations of the Complaint will be taken as true).

On April 7, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The Complainant alleges that the domain names in dispute are identical or confusingly similar to the rights it has established in 5DOLLARHOSTING.COM and 5DH.COM.

2. Complainant also alleges that the Respondent lacks rights or legitimate interests in the domain names.

3. Complainant further alleges that Respondent’s actions in registering the domain name engaged in registration and use of the same in bad faith.

B. Respondent

None considered due to late filing.

FINDINGS:

1. Identical and/or confusingly similar   Policy¶4(a)(i)

The Panel finds that the Complainant has established rights in the 5DOLLARHOSTING.COM mark through registration of that service mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through use of the mark in commerce.  See Koninklijke KPN N.V. v. Telepathy, Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist.  Rights in the mark can be established by pending trademark applications).

The Panel further finds that Respondent’s <5dollar-hosting.com> and <5dollar-hostings.com> domain names are confusingly similar to Complainant’s 5DOLLARHOSTING.COM mark.  See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.  The addition of a hyphen and .com are not distinguishing features”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark . . . does not prevent the likelihood of confusion caused by the use of the remaining identical mark.  The domain name <creampies.com> is similar in sound, appearance, and connotation”).

The Panel finds that the Respondent’s <5dh.com> domain name is confusingly similar to Complainant’s 5DOLLARHOSTING.COM mark.  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 Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

2. Rights or Legitimate Interests  Policy ¶ 4(a)(ii)

The Panel finds that Respondent’s use of the disputed domain names causes actual consumer confusion with Complainant’s business, and that as the disputed domain names compete with Complainant, Respondent lacks rights or legitimate interests in the domain names.  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

In addition, the Panel agrees with the Complainant that Respondent should have been aware of Complainant’s rights in the 5DOLLARHOSTING.COM mark, and that Respondent is not commonly known by the disputed domain names.  See RMO, Inc. v. Burbidge, 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”).

            3.   Registration and Use in Bad Faith   Policy ¶4(a)(iii) 

The Panel concludes that Complainant is correct in that Respondent’s WHOIS contact information is contradictory, and this misleading information evidences bad faith registration of the domain names.  See The Trustees of the Trust Number SR-1 v. Turnberry, Scotland Golf and Leisure, FA 122224 (Nat. Arb. Forum Nov. 3, 2002) (“The register maintained by an ICANN registrar must provide accurate information as to the identity of domain registrants.  The human person or other legal entity shown as the registrant must be assumed to be such by third parties seeking to ascertain a registrant’s identity by such means as a Whois search.  There is no place for the registration of bare trustees or agents for unnamed beneficiaries, principals or would-be purchasers . . . the register is everything: no unregistered interests can prevail against the interests of bona fide third parties relying on information available on the register for all the world to see”); see also Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).

The Panel finds that Respondent registered the disputed domain names to disrupt the Complainant’s business and inasmuch as Respondent competes with Complainant, this evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  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 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).

The Panel finds that Respondent deliberately chose to register domain names that create a likelihood of confusion between the domain names and Complainant’s services, and as this was done for commercial gain, Respondent’s activities evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Indentigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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.

THE PANEL ENTERS THE FOLLOWING CONCLUSIONS AS MATTERS OF LAW:

Identical and/or Confusingly Similar

The Panel concludes that the domain names registered by the Respondent are in fact identical and/or confusingly similar to those of the Complainant.

Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in the domain names <5dollar-hosting.com>, <5dh.com> and <5dollar-hostings.com>.

Registration and Use in Bad Faith

The Panel concludes that the Respondent has in fact registered and used the disputed domain names in bad faith.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <5dollar-hosting.com>, <5dh.com> and <5dollar-hostings.com> domain names be TRANSFERRED from Respondent to Complainant.

ROBERT T. PFEUFFER, Senior District Judge, Panelist
Dated: April 21, 2003

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