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Generic Top Level Domain Name (gTLD) Decisions |
Gardline Surveys Ltd v. Domain Finance
Ltd.
Claim
Number: FA0304000153545
Complainant is
Ian A Stennett Gardline Surveys Ltd, Great Yarmouth, UNITED KINGDOM
(Great Britain) (“Complainant”) represented by Ian A Stennett, of
Gardline Surveys Ltd. Respondent is Domain Finance Ltd., Sharjah,
UNITED ARAB EMIRATES (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <gardline.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 2, 2003; the Forum
received a hard copy of the
Complaint on April 7, 2003.
On
April 4, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <gardline.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has
verified that Respondent is bound by the Network Solutions,
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
April 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 8, 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@gardline.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 16, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra
Franklin 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 <gardline.com>
domain name is identical to Complainant’s common law GARDLINE mark.
2. Respondent does not have any rights or
legitimate interests in the <gardline.com> domain name.
3. Respondent registered and used the <gardline.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
been doing business under the name of GARDLINE in the United States and abroad
since 1969. Complainant uses the mark
in relation to ocean-going survey vessels, marine geophysical, hydrographic and
oceanographic surveys. Complainant is
incorporated under the laws of Texas and England under the name GARDLINE.
Respondent,
DomainSystems, Inc., registered the
<gardline.com> domain name on July 18, 2001. Respondent is making no actual use of the
disputed domain name. Respondent
offered the domain name registration to Complainant for an amount exceeding
$9,100.
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 common law rights in the GARDLINE mark through
continuous use since 1969 in relation to its
ocean survey activities.
Respondent’s
<gardline.com> domain name is identical to Complainant’s GARDLINE
mark. Respondent incorporates
Complainant’s entire mark in the disputed domain name and merely adds the
top-level domain “.com.” The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because
top-level domains are a required
element of every domain name. 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 Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
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
making no actual use of the <gardline.com> domain name other than
to offer it for sale to the highest bidder.
Respondent offered the domain name to Complainant for an amount
exceeding $9,100. When Respondent’s
only use of the disputed domain name is to attempt to sell its registration,
Respondent is not engaging in a bona
fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶
4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites
that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use);
see
also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where Respondent registered the
domain name
with the intention of selling its rights).
Respondent is
known to this Panel as Domain Systems, Inc.
Respondent is in the business of selling domain names under that name,
and there is no evidence on record that establishes that Respondent
is known by
any other name. Thus, the Panel finds
that Respondent is not commonly known as GARDLINE or <gardline.com>
and therefore 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by
the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
made no actual use of the <gardline.com> domain name other than to
offer its registration up for sale.
From this behavior the Panel infers that Respondent’s intent when
registering the domain name was to rent, sell or lease the registration. This type of behavior is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept.
3, 2000) (finding bad faith where the Respondent offered the domain names for
sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded,
are evidence of bad faith”); see also Little Six, Inc v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the
domain name at issue to Complainant was evidence
of bad faith).
Based on the
fact that Respondent registered the <gardline.com> domain name and
offered its registration for sale to Complainant, the Panel infers that
Respondent had actual knowledge of Complainant’s
rights in the mark when it
registered the disputed domain name.
Registration of an infringing domain name despite actual knowledge is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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”); see also Entrepreneur
Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can
infer an intent to confuse").
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 <gardline.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: May 27, 2003
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