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Generic Top Level Domain Name (gTLD) Decisions |
International PADI, Inc. v. George Smith
a/k/a Boldon Leisure Ltd. and Michael Stoker
Claim Number: FA0308000190514
Complainant is International PADI, Inc., Rancho Santa
Margarita, CA (“Complainant”) represented by Diane M. Reed of Knobbe Martens Olson & Bear, LLP.
Respondents are George Smith a/k/a Boldon Leisure Ltd. and Michael Stoker, Bangkok, Thailand
(“Respondents”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain names at issue are <padimail.com>, <padimail.net>,
<padimail.org>, <padipros.net>,
<padipros.org>, <padipro.net>, <padipro.org>,
<padisearch.com>, <padisearch.net> and <padisearch.org>
registered with Gandi and <padipro.com> and <padipros.com>
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide (hereinafter
the “disputed domain names”).
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 22, 2003; the
Forum received a hard copy of the
Complaint on August 25, 2003.
On
August 26, 2003, Gandi confirmed by e-mail to the Forum that the domain names <padimail.com>,
<padimail.net>, <padimail.org>, <padipros.net>,
<padipros.org>, <padipro.net>, <padipro.org>,
<padisearch.com>, <padisearch.net> and <padisearch.org>
are registered with Gandi and that Respondents are the current registrant
of the names. Gandi verified that Respondents are bound
by the Gandi
registration agreement and have 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
August 27, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the Forum that the domain names <padipro.com> and <padipros.com>
are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondents are the current registrant of the names.
Melbourne It, Ltd. d/b/a
Internet Names Worldwide verified that Respondents are bound by the Melbourne
It, Ltd. d/b/a Internet Names
Worldwide registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with
the Policy.
On
September 4, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of September 24, 2003 by which Respondents could file a Response to
the Complaint, was transmitted to Respondents
via e-mail, post and fax, to all
entities and persons listed on Respondents’ registration as technical,
administrative and billing
contacts, and to postmaster@padimail.com, postmaster@padimail.net,
postmaster@padimail.org, postmaster@padipro.com, postmaster@padipros.com,
postmaster@padipros.net,
postmaster@padipros.org, postmaster@padipro.net, postmaster@padipro.org, postmaster@padisearch.com,
postmaster@padisearch.net
and postmaster@padisearch.org by e-mail.
Having
received no Response from Respondents, 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
October 7, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the Forum 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 Respondents.
Complainant
requests that the domain names be transferred from Respondents to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondents are confusingly similar to Complainant’s PADI mark.
2. Respondents have no rights to or
legitimate interests in the disputed domain names.
3. Respondents registered and used the disputed
domain names in bad faith.
B. Respondents failed to submit a Response in
this proceeding.
Complainant
established in this proceeding that it has rights in the PADI mark. Complainant produced evidence of a number of
trademark registrations with the United States Patent and Trademark Office
(“USPTO”)
for the PADI mark, including Reg. No. 1,005,461 (registered on
February 25, 1975) in relation to educational services, namely offering
diver
training at the instructor level. Complainant uses its PADI mark, based on an
acronym for Professional Association of Diving
Instructors, in connection with
services related to scuba diving.
Respondents are
using the <padimail.com>, <padimail.net>, <padimail.org>, <padipros.net>, <padipros.org>,
<padipro.net>, <padipro.org>, <padipro.com>
and <padipros.com> domain names to sell e-mail services and advertising
space to scuba dive instructors and dive centers. Respondents are using the
<padisearch.com>, <padisearch.net> and <padisearch.org>
domain names as a search engine for finding scuba diving instructors and dive
centers.
When Respondent
Stoker registered the disputed domain names, he was a scuba diving instructor
and a member of Complainant’s organization.
Furthermore, Stoker was
contractually obligated not to register any domain names that contained the
PADI mark.
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."
Complainant can
submit one complaint for the twelve disputed domain names because the same
individual or entity registered each domain
name, Respondent, George Smith.
The Rules
provide that “[t]he
complaint may relate to more than one domain name, provided that the domain
names are registered by the same domain-name holder.”
See Adobe Systems, Inc. v. Domain OZ, D2000-0057 (WIPO Mar. 22, 2000). The
Panel recognizes that Complainant would be faced with an “unjustifiable
economic burden” if
it was required to bring several separate administrative proceedings,
“and that it would be a burden on the administrative process”
to require it to
duplicate its effort in the same case. Id. Thus, the Panel accepts as
true and inserts into its decision relevant sections of paragraph 5 of the
Complaint, explaining that
Respondent is George Smith.
With regard to
the identity of Respondent, Complainant alleged the following in its Complaint:
On information
and belief, the domain names were first registered by Mr. Michael Stoker. After
being contacted by Complainant, Mr.
Stoker transferred the domain names to
Respondent, who has continued use of the domain names in the same wrongful
manner as Mr. Stoker.
Also on information and belief, Mr. Stoker is the web
designer for Respondent and has acted throughout this dispute on behalf of
Respondent.
On or about June
17, 2002, Complainant first became aware that Mr. Stoker, one of its PADI
members, had registered the domain names
<padimail.com> and <padipros.com>.
Complainant contacted Mr. Stoker by letter dated June 18, 2002 and requested
that Mr. Stoker deactivate the website at <padipros.com> and cease
the use of any domain names that include the PADI mark. Complainant received an
e-mail from Mr. Stoker on June 19, 2002
in which Mr. Stoker stated, “I didn’t
think that PADI would be very pleased with what I did.” Mr. Stoker indicated
that on that day,
he had applied to the registrar to get the <padipros.com>
domain name removed. On July 6, 2002, Verio, Inc. confirmed cancellation of the
domain name <padipros.com>.
On July 11,
2002, Complainant wrote to Mr. Stoker and asked if he had also cancelled the <padimail.com>,
<padimail.org>, <padimail.net>, <padipros.org>
and <padipros.net> domain names. On July 12, 2002, Mr. Stoker
responded that these other domain names “are with another company than Verio,
but are
all under way in the same manner.”
On or about May
14, 2003, Complainant learned that Mr. Stoker had transferred the <padimail.com>
domain name to Respondent. On May 14, 2003, Complainant received an e-mail
from Respondent stating that Respondent had been given
a point of contact at
PADI regarding the <padimail.com> domain name, and that Respondent
“will be pleased to discuss the matter with [PADI].”
On May 20, 2003,
Complainant received an e-mail from Mr. Stoker stating that, as to the transfer
of the domain names to Mr. Smith,
Mr. Stoker was not aware that PADI has
trademark rights to this domain name and its derivatives.
On June 6, 2003,
Complainant received an e-mail from Mr. Stoker stating that Respondent would certainly
transfer the domain names
to PADI, but that there will be a cost to PADI for
him to do so. Complainant responded that it would unlikely even reimburse Mr.
Stoker or Respondent for costs. On June 7, 2003, Mr. Stoker responded that
negotiations had come to an impasse.
Respondent now
owns and uses the domain names. All of the domain names automatically link to
the <padimail.com> domain name. Mr. Stoker has retained ownership
of the <padipro.net> and <padipro.org> domain names,
which are also linked to the website at the <padimail.com> domain
name.
In August 2003,
Complainant learned that Respondent had registered the <padisearch.com>,
<padisearch.net> and <padisearch.org> domain names
and is operating an active website at these domain names.
According to the UDRP Rules, by which this
administrative proceeding must abide, Complainant met all procedural
requirements. Respondent
offered no evidence to the contrary and Complainant
has clearly shown that the disputed domain name registrants are the same. Thus,
the Panel finds that it is appropriate for Complainant to proceed with a single
complaint.
In view of
Respondents’ 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 will draw such
inferences as the Panel 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.
For purposes of
Policy ¶ 4(a)(i), Complainant established that it has rights in the PADI mark
through its trademark registrations
with the USPTO. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden of
refuting this assumption).
Complainant
argues that the disputed domain names are confusingly similar to Complainant’s
PADI mark because the domain names incorporate
Complainant’s mark and merely
add a generic or descriptive term such as “mail,” “pro,” “pros” and “search” to
the end of the mark.
The addition of a generic or descriptive term does not
serve to alleviate the confusing similarity between the disputed domain names
and the registered trademark. 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 Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
established that it has rights to and legitimate interests in the mark used in
each of these disputed domain names.
Respondents have not chosen to favor the Panel with a Response in this
proceeding. Therefore, the Panel accepts all reasonable allegations
and
inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to
admitting the truth of
complainant’s assertion in this regard”); 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).
Furthermore,
based on Respondents’ failure to respond in this proceeding, the Panel presumes
that Respondents lack any rights to or
legitimate interests in the disputed
domain names with regard to Policy ¶ 4(a)(ii). 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 Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately
apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Respondents are
using the <padimail.com>, <padimail.net>, <padimail.org>, <padipros.net>, <padipros.org>,
<padipro.net>, <padipro.org>, <padipro.com>
and <padipros.com> domain names to sell e-mail services and
advertising space to scuba dive instructors and dive centers. Respondents are
using the <padisearch.com>, <padisearch.net> and <padisearch.org>
domain names as a search engine for finding scuba diving instructors and dive
centers. Respondents’ unauthorized, commercial use
of Complainant’s PADI mark
establishes neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
U.S. Franchise Sys., Inc. v. Thurston Howell III, FA 152457 (Nat. Arb.
Forum May 6, 2003) (holding that
Respondent’s use of Complainant’s mark and the goodwill surrounding that mark
as a means of attracting Internet users
to an unrelated business was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's
website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Moreover,
Respondents have offered no proof and no evidence in the record indicates that
Respondents have been commonly known by the
disputed domain names. Thus, the
Panel finds that Respondents have not established 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 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 Complainant has satisfied Policy ¶ 4(a)(ii).
When Respondent
Stoker registered the disputed domain names, he was a scuba diving instructor
and a member of Complainant’s organization.
Furthermore, Stoker was
contractually obligated not to register any domain names that contained the
PADI mark. Under these circumstances,
the Panel presumes Stoker had actual or
constructive knowledge of Complainant’s rights in its mark. Stoker’s
registration and use
of the disputed domain names despite knowledge of
Complainant’s rights evidences bad faith registration and sue 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").
Moreover,
Respondents’ unauthorized, commercial use of domain names confusingly similar
to Complainant’s PADI mark constitutes bad
faith registration and use under
Policy ¶ 4(b)(iv). See Kmart v. Khan, 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 State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith
where Respondent registered the domain name <bigtex.net> to infringe
on
Complainant’s goodwill and attract Internet users to Respondent’s website).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the disputed domain names be TRANSFERRED from
Respondents to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 21, 2003.
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