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Generic Top Level Domain Name (gTLD) Decisions |
SmartBargains, Inc. v. Peter Carrington
a/k/a Party Night, Inc.
Claim
Number: FA0303000152123
Complainant is
SmartBargains, Inc., Boston, MA, USA (“Complainant”) represented
by Sean F. Heneghan. Respondent is Peter Carrington a/k/a Party
Night Inc., Amsterdam, THE NETHERLANDS (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <smartbargians.com>, registered with Key-Systems
Gmbh.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 27, 2003; the
Forum received a hard copy of the
Complaint on March 31, 2003.
On
March 28, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the
domain name <smartbargians.com> is registered with Key-Systems Gmbh
and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that
Respondent is bound by the Key-Systems Gmbh 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
April 1, 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@smartbargians.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
May 1, 2003, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr.
(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 <smartbargians.com>
domain name is confusingly similar to Complainant’s SMARTBARGAINS family of
marks.
2. Respondent does not have any rights or
legitimate interests in the <smartbargians.com> domain name.
3. Respondent registered and used the <smartbargians.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
SmartBargains, Inc., holds a federal U.S. registration for the
SMARTBARGAINS.COM mark (U.S. Reg. No. 2,606,658, registered
on the Principal
Register of the U.S. Patent and Trademark Office on August 13, 2002), claiming
first use of the mark in July of
2000. Complainant also registered the
SMARTBARGAINS mark in the European Union (E.U. Reg. No. 1,960,558, registered
on May 6, 2002).
Complainant operates under its SMARTBARGAINS family of marks
as an on-line retail store service at the <smartbargains.com>
domain
name.
Respondent,
Peter Carrington a/k/a Party Night, Inc., registered the <smartbargians.com>
domain name on March 17, 2002, and is not licensed or authorized to use the
SMARTBARGAINS.COM or SMARTBARGAINS mark for any purpose.
Respondent links the
disputed domain name to an adult-oriented website at the
<hanky-panky-college.com> domain name, and uses
pop-up advertising from
sponsors such as <yes-yes-yes.com>.
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 rights in the SMARTBARGAINS family of marks via its registration of
those marks with the U.S. Patent and
Trademark Office and the E.U. Office for
Harmonization in the Internal Market, as well as through use of the mark in
commerce since
2000.
Respondent’s <smartbargians.com>
domain name is confusingly similar to both Complainant’s SMARTBARGAINS
and SMARTBARGAINS.COM marks.
Respondent’s transposition of the letters “a” and “i” in the disputed
domain name, taking advantage of a common misspelling of the
word “bargain,”
creates a domain name that is confusingly similar to Complainant’s
SMARTBARGAINS mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity,
as the result reflects a
very probable typographical error”);
see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name
<peir1.com> is confusingly similar to Complainant's PIER 1 mark).
Accordingly, the
Panel finds that the <smartbargians.com> domain name is confusingly similar to Complainant’s SMARTBARGAINS family
of marks under Policy ¶ 4(a)(i).
Without a
response to the Complaint to rely upon, Complainant’s burden of making a prima
facie showing that Respondent lacks rights or legitimate interests in the
disputed domain name is met if Complainant can demonstrate that
the “safe
harbors” for domain name registrants listed in Policy ¶¶ 4(c)(i)-(iii) do not
apply 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 registered a common misspelling of Complainant’s mark in
order to redirect Internet users to an adult-oriented website. At the same time, Internet users are
subjected to a series of pop-up advertisements. Using Complainant’s mark for these purposes is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is
it a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic
site is not a legitimate or
fair use); 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, as either Peter Carrington or Party Night, Inc., is not
“commonly known by” the name <smartbargians.com> or SMARTBARGIANS. As such, 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
MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that Respondent was not “commonly known by”
the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<smartbargians.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s <smartbargians.com>
domain name is nearly identical to
Complainant’s SMARTBARGAINS.COM mark and <smartbargains.com> domain
name. This creates an immediate
likelihood of confusion as to the source or sponsorship of Respondent’s website
in the minds of Internet
users who inadvertently misspell Complainant’s domain
name when attempting to reach its webpage.
The inference is that Respondent created this likelihood of confusion
for commercial gain via pop-up advertisements and referral fees
from an
adult-oriented website. Thus,
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iv). See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25,
2000) (finding bad faith where Respondent attracted users to his website for
commercial gain
and linked his website to pornographic websites); see also Encyclopaedia Britannica Inc. v. Shedon.com,
D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶
4(b)(iv) by using the domain name <britannnica.com>
to hyperlink to a
gambling site).
The Panel thus
finds that Respondent registered and used the <smartbargians.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <smartbargians.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 6, 2003
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