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Generic Top Level Domain Name (gTLD) Decisions |
Dicota GmbH v. NOLDC, Inc.
Claim
Number: FA0408000311365
Complainant is Dicota GmbH (“Complainant”),
represented by Russell J. DePalma, of Lynn Tillotson & Pinker L.L.P., 750 N. St. Paul, Suite 1400, Dallas, TX 75201. Respondent is NOLDC, Inc. (“Respondent”), 838 Camp Street, Fourth Floor, New
Orleans, LA 70130.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dicota-store.com>, registered with
InterCosmos Media Group, Inc. d/b/a Directnic.com.
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 Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 12, 2004; the
Forum received a hard copy of the
Complaint on August 12, 2004.
On
August 12, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain name <dicota-store.com> is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a/
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
August 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 13, 2004 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@dicota-store.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
September 20, 2004, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dicota-store.com>
domain name is confusingly similar to Complainant’s DICOTA mark.
2. Respondent does not have any rights or
legitimate interests in the <dicota-store.com> domain name.
3. Respondent registered and used the <dicota-store.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dicota GmbH, is a multinational German corporation organized under the laws of
Germany. Complainant transacts business
in the United States and is the owner of United States Federal Trademark
Registration No. 2,231,023,
issued March 9, 1999. Complainant is a leading manufacturer and supplier of valises,
travel bags, backpacks, carrying cases and accessories for notebook
computers
and uses its DICOTA mark in connection with these mobile computing products.
Respondent
registered the <dicota-store.com> domain name on April 24, 2004
and uses the domain name to redirect Internet users to a search engine
providing links to various websites
advertising the sale of different products
and services, including computer-related products and services.
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 in this proceeding that it has rights to the DICOTA mark as
evidenced by its registration with the United
States Patent and Trademark
Office. 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).
The domain name
registered by Respondent, <dicota-store.com>, is confusingly
similar to Complainant’s DICOTA mark because it includes Complainant’s mark in
it’s entirety with the exception of
the addition of a hyphen and the generic or
descriptive word “store.” The addition
of a hyphen does not significantly distinguish the domain name from the
mark. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (finding that putting a hyphen between words of Complainant’s mark is
identical to and confusingly
similar to Complainant’s mark); see also InfoSpace.com, Inc. v. Ofer, D2000-0075
(WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is
identical to Complainant’s INFOSPACE trademark.
The addition of a hyphen and
.com are not distinguishing features”); see also Easyjet Airline Co. Ltd. v.
Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the
domain name <easy-jet.net> was virtually identical to
Complainant's EASYJET mark and therefore that they are confusingly similar).
Moreover, the
addition of the generic or descriptive term store that describes Complainant’s
business does not negate the confusing
similarity of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
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); see also 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 AXA China Region Ltd. v. KANNET
Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic
qualifiers or generic nouns can rarely be relied upon to differentiate
the mark
if the other elements of the domain name comprise a mark or marks in which
another party has rights); see also Am. Online, Inc. v. Anytime Online
Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that
Respondent’s domain names, which incorporated Complainant’s entire mark
and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive
features capable of overcoming
a claim of confusing similarity); see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and
deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
name that contains Complainant’s mark.
Due to Respondent’s failure to respond to the Complaint, the Panel will
assume that Respondent lacks rights and legitimate interests
in the disputed
domain name. In fact, once Complainant
makes a prima facie case showing support for its allegations, the burden
shifts to Respondent to show that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that 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”); see also 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).
Moreover, where
Complainant makes a prima facie showing and Respondent does not respond,
the Panel may accept all reasonable allegations and inferences in the Complaint
as true. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is
appropriate to accept as true all allegations
of the Complaint”); see also
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).
Respondent is
using the <dicota-store.com> domain name to redirect Internet
users to a website that features advertising for a variety of goods and that
hosts a search engine
to link Internet users to a variety of websites,
including sites that offer the same type of goods Complainant offers. Respondent’s use of a domain name that is
confusingly similar to Complainant’s DICOTA mark to redirect Internet users
interested in
Complainant’s products to a commercial website that offers links
to websites advertising products similar to those offered by Complainant
is not
a use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii). See Bank of America Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of
infringing domain names to direct Internet traffic to
a search engine website
that hosted pop-up advertisements was evidence that it lacked rights or
legitimate interests in the domain
name); see also Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s
mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide
offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name).
Furthermore,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <dicota-store.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for commercial gain. Respondent’s <dicota-store.com> domain name diverts
Internet users wishing to search under Complainant’s mark to Respondent’s
commercial website through the use
of a domain name confusingly similar to
Complainant’s mark. Respondent’s
practice of diversion, motivated by commercial gain, through the use of a
confusingly similar domain name evidences bad
faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged
in bad faith use and registration by linking the
domain name to a website that
offers services similar to Complainant’s services, intentionally attempting to
attract, for commercial
gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
Respondent’s
registration of the domain name, incorporating Complainant’s registered mark in
its entirety with the addition of a hyphen
and a generic or descriptive term,
suggests that Respondent knew of Complainant’s rights in the DICOTA mark. Thus, the Panel finds that Respondent likely
chose the <dicota-store.com> domain name based on the distinctive
and well-known qualities of Complainant’s mark. See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so
obviously connected with Complainant and its products that the
use of the
domain names by Respondent, who has no connection with Complainant, suggests
opportunistic bad faith); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dicota-store.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
October 4, 2004
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