DECISION

Savin Corporation v. Copier Dealers, Inc. c/o John Simon

Claim Number:  FA0304000155903

PARTIES

Complainant is Savin Corporation, Stamford, CT (“Complainant”) represented by David A. Einhorn of Anderson Kill & Olick, P.C. Respondent is Copier Dealers Inc. c/o John Simon New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> registered with Enom, Inc.

PANEL

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 28, 2003; the Forum received a hard copy of the Complaint on May 1, 2003.

On May 1, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 29, 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@savin-copiers.com, postmaster@savincopierdiscount.com, postmaster@savincopiersdirect.com and postmaster@savincopierclearance.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 June 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> domain names are confusingly similar to Complainant’s SAVIN mark.

2. Respondent does not have any rights or legitimate interests in the <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> domain names.

3. Respondent registered and used the <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> domain names in bad faith.

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

FINDINGS

Complainant holds four trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SAVIN mark, the earliest being Reg. No. 836,540 (registered on October 10, 1967) in relation to developing liquid for office copiers. Complainant also holds trademark registrations with the USPTO related to photocopying machines and parts thereof, maintenance and repair services for photocopiers and word processors, and facsimile machines. Complainant operates a website at <savin.com>.

Respondent registered the <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> domain names (hereinafter the “disputed domain names”) on August 12, 2002 and August 20, 2002. Respondent has not and is not currently using the disputed domain names.

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 that it has rights in the SAVIN mark through registration with the USPTO and continuous use in commerce since at least 1967.

Respondent’s disputed domain names are confusingly similar to Complainant’s SAVIN mark because each of the domain names appropriates Complainant’s entire mark and merely adds generic terms such as “copier,” “discount” and “clearance” to the end of the mark. The addition of generic terms to Complainant’s famous mark does not significantly distinguish the disputed domain names from the mark pursuant to Policy ¶ 4(a)(i) because Complainant’s SAVIN mark remains the dominant element of the domain names. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) has been established.

Rights or Legitimate Interests

Respondent has failed to respond to the allegations presented to the Panel in the Complaint. Therefore, the Panel may 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) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, the absence of a Response allows the Panel to presume that Respondent lacks any rights to or legitimate interests in the disputed domain names for the purposes of Policy ¶ 4(a)(ii) because of Respondent’s failure to defend its rights or to demonstrate its interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent has not used and is not presently using the disputed domain names. Each of the domain names resolves to a portal website, <namecheap.com>. The registration of a domain name and the subsequent non-use of said domain name for a period of time is commonly referred to as passive holding. Respondent’s passive holding of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

Furthermore, Respondent has provided no proof and there is no evidence in the record that indicates Respondent is commonly known by any of the disputed domain names. Thus, Respondent has failed to establish that it has any rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has not used the disputed domain names since the registration of the domain names in August 2002. The Panel infers that the disputed domain names have been registered and used in bad faith because of Respondent’s passive holding of the domain names. See 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Moreover, Complainant has produced evidence that indicates Respondent has registered domain names that appropriate famous marks in a similar vein to the disputed domain names, including <ricohcopierdiscount>, <ricohcopiersdirect.com> and <canoncopierdiscount.com>. The Panel finds that Respondent’s registration and use of numerous domain names that include famous marks and generic terms demonstrate a pattern of registering domain names to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question do not link to any on-line presence or website).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <savin-copiers.com>, <savincopierdiscount.com>, <savincopiersdirect.com> and <savincopierclearance.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  July 9, 2003

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