DECISION

Dick Blick Holdings, Inc. v. Midnight Media

Claim Number:  FA0303000151539

PARTIES

Complainant is Dick Blick Holdings, Inc., Highland Park, IL (“Complainant”) represented by Richard J. Musgrave, of Husch & Eppenberger, LLC. Respondent is Midnight Media, Nevada City, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dickblickart.com>, registered with Tucows, Inc.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 25, 2003; the Forum received a hard copy of the Complaint on March 28, 2003.

On March 26, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <dickblickart.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 March 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 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@dickblickart.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 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <dickblickart.com> domain name is confusingly similar to Complainant’s DICK BLICK ART MATERIALS mark.

2. Respondent does not have any rights or legitimate interests in the <dickblickart.com> domain name.

3. Respondent registered and used the <dickblickart.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Dick Blick Holdings, Inc., holds U.S. Reg. No. 2,129,168 for the DICK BLICK ART MATERIALS mark. The mark was registered by Complainant on the Principal Register of the U.S. Patent and Trademark Office on January 13, 1998 for mail order catalog services featuring artists materials and supplies and retail store services in that industry.

Respondent, Midnight Media, registered the <dickblickart.com> domain name on April 4, 2002, and is not licensed or authorized to use Complainant’s registered DICK BLICK ART MATERIALS mark for any purpose. Respondent has never posted content at the disputed domain name.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the DICK BLICK ART MATERIALS mark through proof of registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through continuous use of the mark in commerce.

Respondent’s <dickblickart.com> domain name is confusingly similar to Complainant’s DICK BLICK ART MATERIALS mark. The only significant difference between Complainant’s mark and Respondent’s domain name is the omission of the word MATERIALS from the disputed domain name, as both the elimination of the spaces in Complainant’s mark and the addition of the top-level domain “.com” are standard features of any domain name. Respondent’s removal of the word MATERIAL is immaterial in this instance, as the dominant feature of the domain name remains the distinctive DICK BLICK portion of Complainant’s mark. See 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); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

Accordingly, the Panel finds that the <dickblickart.com> domain name is confusingly similar to Complainant’s DICK BLICK ART MATERIALS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent failed to respond to the Complaint in this proceeding. As a result, if Complainant is able to make a prima facie case against Respondent, showing it has no rights or legitimate interests in the disputed domain name, Complainant satisfies Policy ¶ 4(a)(ii). Complainant can make a prima facie case by demonstrating that the three examples indicative of rights or legitimate interests in a domain name listed in Policy ¶¶ 4(c)(i)-(iii) would not be applicable to Respondent. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding 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”).

Respondent has made no use of the disputed domain name since its registration over a year ago. Respondent’s non-use of the domain name, absent any evidence to the contrary, cannot be considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); 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”).

Respondent, named in the disputed domain name’s WHOIS contact information as “Midnight Media,” does not appear to be “commonly known by” the disputed domain name. Thus, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. 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 Respondent does not have rights or legitimate interests in the <dickblickart.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s passive holding of the <dickblickart.com> domain name is evidence that it registered and used the disputed domain name in bad faith. By incorporating the distinctive portion of Complainant’s mark into its domain name and then not making any use of the domain name for over a year, Respondent provides sufficient evidence to support a finding of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

The Panel thus finds that Respondent registered and used the <dickblickart.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <dickblickart.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  April 28, 2003

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