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Forte Communications, Inc. v. Service for Life [2004] GENDND 1201 (22 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forte Communications, Inc. v. Service for Life

Case No. D2004-0613

1. The Parties

Complainant is Forte Communications, Inc. (“Complainant” or “Forte”), a corporation incorporated under the laws of the State of Arizona, with a principal place of business located in Tucson, Arizona, United States of America.

Respondent is Service for Life (“Respondent” or “Service”) located in Ballwin, Missouri, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <serviceforlife.com> (the “Domain Name”). The registrar is Network Solutions, Inc. (the “Registrar”) located in Herndon, Virginia, United States of America.

3. Procedural History

On August 4, 2004, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On August 5, 2004, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 9, 2004, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On August 6, 2004 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On August 10, 2004, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On September 1, 2004, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On September 8, 2004 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Sole Panelist”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

4. Factual Background

Complainant is a recognized national leader in providing marketing materials for use by real estate professionals. Complainant provides its goods and services under a variety of trademarks, including the trademark SERVICE FOR LIFE! (the “Mark”). Complainant offers its goods and services to companies and individuals by a variety of means, including, without limitation, through websites on the Internet.

In early 2004, Complainant learned that the Domain Name was registered to Respondent. Upon visiting the website located at <serviceforlife.com>, on or about March 29, 2004, Complainant found that the Domain Name did not resolve to an active website. On March 29, 2004, Complainant, through Matt Bieber, its web master, attempted to contact Respondent in an effort to discuss Respondent’s plans with respect to the Domain Name. The email was subsequently returned to Complainant’s web master as undeliverable.

Again on June 2, 2004, Complainant, through its web master, attempted to contact Respondent by email. Once again, the message was returned as undeliverable. Upon Complainant’s inability to reach Respondent to settle this matter through other means, Complainant proceeded with this Complaint.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it is the owner of U.S. Trademark Registration No. 2,631,717 for the Mark SERVICE FOR LIFE! covering “newsletters in the field of real estate and general interest,” with continuous use since at least as early as 1999, that its trademark registration is valid and subsisting, and that it serves as prima facie evidence of its ownership and the validity of the Mark. Complainant further contends that it is also the owner of approximately 19 domain names related to Complainant’s business, including <3-steps.com> and <CraigForte.com> and that its Mark and domain names have been and are recognized by the public and the industry as originating from a single source, namely Complainant. Complainant alleges that its Mark and domain names serve to distinguish its goods and services from those of others. Complainant further contends that through its significant advertising efforts, monetary expenditures, skills and experience, has acquired and enjoys substantial goodwill and a valuable reputation through Complainant’s distinctive Mark and domain names. The maintenance of high standards of quality and excellence for Complainant’s goods and services has contributed to this valuable goodwill and reputation. Complainant has expended and continues to expend a significant amount of time and money to advertise and promote its goods and services through its distinctive Mark and domain names.

ii. Complainant argues that the Domain Name is confusingly similar to the Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark with the addition of generic or nondistinctive terms. Aside from the generic top level domain “.com” at the end of the Domain Name and the exclamation point at the end of the Complainant’s Mark, the domain name <serviceforlife.com> is identical to Complainant’s SERVICE FOR LIFE! Mark.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent cannot demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known by the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Complainant alleges that the following elements show Respondent’s bad faith (i) inaction by Respondent in the use the Domain Name to post any content on the Internet or for any other legitimate purpose; (ii) false information provided by Respondent with the registration of the Domain Name; and (iii) creation of the likelihood of confusion by Respondent.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has enforceable rights in the Mark.

ii. Respondent does not dispute that the Domain Name is confusingly similar to the Mark.

iii. Respondent does not dispute that it lacks rights to or legitimate interests in the Domain Name.

iv. Respondent does not dispute that it registered or used the Domain Name in bad faith.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO April 10, 2001).

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it is the owner of U.S. Trademark Registration No. 2,631,717 for the Mark SERVICE FOR LIFE! covering “newsletters in the field of real estate and general interest,” with continuous use since at least as early as 1999, that its trademark registration is valid and subsisting, and that it serves as prima facie evidence of its ownership and the validity of the Mark. Respondent has failed to dispute these contentions. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is confusingly similar to the Mark pursuant to the Policy paragraph 4(a)(i). The fact that the Domain Name does not include an exclamation point at the end does not render the Domain Name sufficiently distinguishable so that the Domain Name is not confusingly similar to Complainant’s marks. See Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the C-SPAN trademark, is confusingly similar to Complainant’s mark). It has long been held that minor changes between the mark in question and a disputed domain name are not sufficient to distinguish the domain name from the mark for the purposes of the confusingly similar analysis pursuant to Policy Paragraph 4(a)(i). See, e.g., The Prudential Insurance Company of America v. Bigxa Co. Ltd, FA0008000095487 (NAF October 26, 2000) (finding that “[t]he only difference between the domain name and Complainant’s various trademarks is the addition of the words “the” and “.com” in Respondent’s domain name . . . . [s]uch differences are minor and do nothing to cause and real distinction between the names or prevent confusion”); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO December 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”); see also The London Marathon Limited v. Websitebrokers Limited, D2001-0157 (WIPO April 5, 2001) (finding the domain name TheLondonMarathon.com confusingly similar to the Complainant’s “London Marathon” trademark).

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the Mark.

The Sole Panelist finds that the Domain Name is confusingly similar to the SERVICE FOR LIFE Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000).

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Mark in a domain name or in any other manner.

Complainant has demonstrated that Respondent’s Domain Name does not resolve to a website or other substantive online presence. Respondent acquired the Domain Name on November 10, 1998, nearly 6 years before the date of this Complaint and Respondent has not taken any steps to develop a website or use the Domain Name in a legitimate manner. Respondent’s failure to use, or prepare to use, the Domain Name in a bona fide offering of goods and services is sufficient to show that Respondent has no legitimate interest in the Domain Name. See TABCORP Holdings v. Steven Hertzberg, D2000-0566 (WIPO September 20, 2000) (finding that Respondent has no legitimate interest in domain name where it has not shown use of, or preparations to use, the domain name in a bona fide offering of goods or services).

Complainant has demonstrated that after making a substantial inquiry into the Respondent’s identity, it is not possible to discern the true identity of Respondent based on the information provided by the Respondent to the Registrar. Respondent has not made a legitimate use of the Domain Name nor has Respondent been commonly known by or connected to the names “Service For Life.” See The Prudential Insurance Company of America v. Bigxa Co. Ltd, FA0008000095487 (NAF October 6, 2000) (finding Respondent had no rights or legitimate interest in a domain name where Respondent was not known by or connected with the name).

Respondent’s failure to use the Domain Name for any apparent purpose also negates the possibility that Respondent is making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Respondent has failed to come forward with any evidence to meet the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).

The Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product

Complainant alleges that Respondent has made no use of the Domain Name. Therefore, none of the elements of the Policy paragraph 4(b) applies. The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no use of the Domain Name. There is no evidence that a website or other online presence is being developed from the Domain Name. See Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (finding bad faith where “there is no evidence that a Web site or other online presence is in the process of being established which will use the domain name”); see also Chernow Communications v. Kimball, WIPO Case No. D2000-0119 (finding that respondent's passive holding of the disputed domain name supports a determination of “bad faith” registration and use); Mondich and American Wine Biscuits, Inc. v. Brown, WIPO Case No. D2000-0004. There is no evidence of advertising, promotion or other display on or related to the Domain Name. See Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (finding bad faith where “there is no evidence of advertising, promotion or display to the public of the domain name”). In short, the Respondent is merely passively holding the Domain Name which alone is sufficient to constitute bad faith. See Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (finding that mere passive holding of a website is sufficient to constitute acting in bad faith).

A second factor to be considered is the providing of false information regarding the registration. Section 4 of Network Solutions, Inc., Respondent’s registrar’s, Service Agreement provides that:

4. ACCURATE INFORMATION. You agree to: (1) provide certain true, current, complete and accurate information about you as required by the application process; and (2) maintain and update according to our modification procedures the information you provided to us when purchasing our services as needed to keep it current, complete and accurate.

Respondent has failed to provide a proper business name, working email address, phone number, voice or fax phone number for the administrative contact as required under the Respondent’s Service Agreement. Respondent has purposefully used false information in registering the Domain Name to conceal Respondent’s identity and to make it difficult to locate Respondent for purposes of lawfully pursuing the Domain Name. Respondent has taken deliberate steps to conceal its true identity; see Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (finding bad faith where the “Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made.”); Yahoo!, Inc. v. Eitan Zviely, D2000-0273 (finding that “[Respondent’s] registration under phony names” constitutes bad faith registration and use); Salomon Smith Barney Inc. v. Salomon Internet Services, D2000-0668 (finding bad faith use and registration where Respondent “has taken steps to conceal its true identity”).

A third factor is the likelihood of confusion among Internet users or Netizens. Respondent’s activities create a likelihood of confusion with respect to the source, sponsorship, affiliation or endorsement of the <serviceforlife.com> website. The confusion is caused by the website’s location at <serviceforlife.com>, a domain name identical to Complainant’s trademark. Respondent does not display a disclaimer or other information informing consumers that it is not affiliated with Complainant. Netizens often use a trademark or service mark to guess at a domain name. Therefore, Respondent’s use of the Domain Name is disruptive of Complainant’s business because potential customers of Complainant are having trouble locating it and may become frustrated or draw adverse inferences concerning the status of Complainant’s business.

The evidence establishes: (i) inaction by Respondent in the use the Domain Name to post any content on the Internet or for any other legitimate purpose; (ii) false information provided by Respondent with the registration of the Domain Name; and (iii) creation of the likelihood of confusion by Respondent.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Sole Panelist concludes (a) that the Domain Name <serviceforlife.com> is confusingly similar to Complainant’s registered Mark SERVICE FOR LIFE!, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Date: September 22, 2004