DECISION

Dicota GmbH v. jjh jjh

Claim Number:  FA0408000317265

PARTIES

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 jjh jjh (“Respondent”), eun, Seoul, na 120843, Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dicotastore.com>, registered with Wild West Domains, 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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 20, 2004; the Forum received a hard copy of the Complaint on August 23, 2004.

On August 23, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <dicotastore.com> is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 September 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 21, 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@dicotastore.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 29, 2004, 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <dicotastore.com> domain name is confusingly similar to Complainant’s DICOTA mark.

2. Respondent does not have any rights or legitimate interests in the <dicotastore.com> domain name.

3. Respondent registered and used the <dicotastore.com> domain name in bad faith.

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

FINDINGS

Complainant, Dicota GmbH, is a multinational corporation, organized under the laws of Germany, which conducts business in the United States. Complainant is a leading manufacturer and supplier of valises, travel bags, backpacks, carrying cases and accessories for notebook computers.

Complainant owns a trademark registration for the DICOTA mark (Reg. No. 2,231,023, issued Mar. 9, 1999) with the United States Patent and Trademark Office for mobile computing products. Complainant also holds trademark registrations in several other countries for the DICOTA mark, including Germany, Canada, the European Union and Great Britain.

Complainant operates its main website at the <dicota.com> domain name where consumers can access Complainant’s products.

Respondent registered the disputed domain name on August 4, 2004 and is using the domain name to divert Internet traffic to a website where the domain name registration is offered for sale. Respondent offered to sell the domain name to Complainant’s attorney for $3500.

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 DICOTA mark through registration with the United States Patent and Trademark Office and through the use of its mark in commerce. 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.

Respondent’s <dicotastore.com> domain name is confusingly similar to Complainant’s DICOTA mark because the domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the generic term “store” and the top-level domain “.com.” The mere addition of a generic term and a top-level domain does not negate the confusing similarity between Respondent’s domain name and Complainant’s mark 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) (“[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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element; 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.  

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <dicotastore.com> domain name. Respondent’s failure to respond to the Complaint allows the Panel to assume that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist; see also 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”.

The Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See 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; 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.

Respondent is using the <dicotastore.com> domain name to divert Internet traffic to a website that offers the domain name registration for sale. Respondent’s use of a domain name confusingly similar to Complainant’s DICOTA mark to redirect Internet users interested in Complainant’s mobile computing products to Respondent’s website that offers the domain name registration for sale is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Furthermore, Respondent offered to sell the domain name registration to Complainant’s attorney for $3500.  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 Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name; see also The Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum March 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).

Moreover, Respondent has offered no evidence and no proof in the record suggests that Respondent is commonly known by the <dicotastore.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name 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 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.

Registration and Use in Bad Faith

Respondent registered the <dicotastore.com> domain name for the primary purpose of selling the domain name registration to Complainant, who is the owner of the DICOTA trademark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.  Registration and use of a domain name for the primary purpose of selling the domain name registration to the owner of a trademark for valuable consideration in excess of the costs related to the domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See 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; see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs; see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith; see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) finding bad faith where Respondent offered the domain names for sale.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <dicotastore.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 12, 2004

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