DECISION

Auto-trol Technology (Canada) Ltd. v. Yuen Wei

Claim Number:  FA0303000151121

PARTIES

Complainant is Auto-trol Technology (Canada) Ltd., Calgary, AB, CANADA (“Complainant”). Respondent is Yuen Wei, Baltimore, MD, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <geostation.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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.

Hon. Ralph Yachin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 21, 2003; the Forum received a hard copy of the Complaint on March 24, 2003.

On March 21, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <geostation.com> is registered with Directnic.Com and that Respondent is the current registrant of the name. Directnic.Com has verified that Respondent is bound by the Directnic.Com 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 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@geostation.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 30, 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.

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 <geostation.com> domain name is identical to Complainant’s GEOSTATION mark.

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

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

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

FINDINGS

Complainant, Auto-trol Tech. Ltd., holds numerous trademark registrations for GEOSTATION in the United States and Canada. More specifically, Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,800,486 registered on the Principal Register on October 26, 1993. Complainant’s USPTO registration indicates Complainant’s GEOSTATION mark denotes “computer software for use in designing and drafting maps and instruction manuals.” Complainant also holds Canadian Trademark Reg. No. 334,380 for the GEOSTATION mark registered on November 20, 1987. Complainant’s registrations indicate that it has been consistently and exclusively using the GEOSTATION mark in commerce since August 1, 1987.

Respondent, Yuen Wei, registered <geostation.com> on April 17, 2002. Complainant’s investigation of Respondent reveals that the subject domain name resolves to a website that contains pornographic content. Respondent does not use the “GEOSTATION” mark or name in any manner on its website.

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 GEOSTATION mark through registration and continuous use of the mark in commerce since 1987. Further, Complainant’s GEOSTATION mark is an invented, fanciful word that does not have a descriptive or generic meaning. Fanciful marks are referred to as the “strongest” of all marks, in that their novelty creates a substantial impact on the buyer's mind – if sufficiently advertised and recognized. Being a “strong” mark has significance, in that the mark will then be given an expansive scope of judicial protection. McCarthy on Trademarks and Unfair Competition, § 11:6 (4^th ed. 2000).

Respondent’s <geostation.com> domain name is identical to Complainant’s GEOSTATION mark. Respondent’s second-level domain fails to deviate from Complainant’s mark in any way. Additionally, top-level domains, such as “.com,” are irrelevant when determining confusing similarity or identicality under the Policy. Therefore, Respondent’s domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant’s evidence and corresponding assertions are unanswered and uncontested. Respondent’s failure to respond suggests that it lacks rights and legitimate interests in the <geostation.com> domain name. Further, Respondent has not successfully rebutted Complainant’s prima facie case; therefore, all reasonable inferences made by Complainant will be accepted as true unless clearly contradicted by the evidence. See 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”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent’s domain name resolves to a pornographic website. The explicit content displayed on Respondent’s website tarnishes Complainant’s GEOSTATION mark and the goodwill contained therein. The tarnishing of another’s mark occurs when “a famous mark is improperly associated with an inferior or offensive product or service.” Ringling Bros. V. B.E. Windows Corp., 937 F.Supp. 209 (S.D.N.Y. 1996). There is a likelihood that Complainant’s existing and potential customers will visit Respondent’s website and believe that Complainant is somehow connected with Respondent’s explicit materials. Respondent’s opportunistic use of Complainant’s fanciful mark for commercial purposes fails to establish rights or legitimate interests in the <geostation.com> domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website).

Nothing before the Panel suggests Respondent is commonly known by the subject domain name or the “geostation” second-level domain. As stated, Complainant’s GEOSTATION mark is fanciful and unique to Complainant’s offerings. The more distinctive the trademark is, the greater its influence in stimulating sales, its hold on the memory of the purchaser and the likelihood of associating similar designations on other goods with the same source. Therefore, Respondent is unlikely to have any legitimate connection with the GEOSTATION mark, and fails to establish rights in the <geostation.com> domain name pursuant to Policy ¶ 4(c)(ii). See McCarthy on Trademarks and Unfair Competition, § 11:6 (4^th ed. 2000); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Uncontested evidence indicates that Respondent’s domain name resolves to a website that displays pornographic content. Such use tarnishes the goodwill Complainant has established in the GEOSTATION mark. Further, Complainant’s mark is an invented word that holds no meaning apart from Complainant’s computer software and related services. Respondent’s bad faith registration and use of the domain name is articulated under Policy ¶ 4(b)(iv). Specifically, circumstances indicate that Respondent registered the subject domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s GEOSTATION mark. Respondent’s unauthorized exploitation of Complainant’s mark is conduct that is explicitly proscribed by the Policy. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to Complainant’s mark and used a confusingly similar pornographic depiction of Complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <geostation.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 1, 2003

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