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Generic Top Level Domain Name (gTLD) Decisions |
Pacific Cycle, LLC v. Chen Huang
Claim
Number: FA0410000340603
Complainant is Pacific Cycle, LLC (“Complainant”),
represented by Brian G. Gilpin, of Godfrey & Kahn, S.C.,
780 North Water Street, Milwaukee, WI 53202.
Respondent is Chen Huang (“Respondent”),
PO Box 20231, Zengdu, Guangzhou, China 65487.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <schwinnscooter.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
11, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 14, 2004.
On
October 12, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain
name <schwinnscooter.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
October 15, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 4, 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@schwinnscooter.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 17, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <schwinnscooter.com>
domain name is confusingly similar to Complainant’s SCHWINN mark.
2. Respondent does not have any rights or
legitimate interests in the <schwinnscooter.com> domain name.
3. Respondent registered and used the <schwinnscooter.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Pacific Cycle, LLC, is a worldwide leader in designing, marketing and
distributing high-quality scooters, bicycles and
related products to both
professional and recreational users.
Complainant has been offering these products since as early as
1895. Complainant owns several
trademark registrations related to bicycles, scooters and related products,
including trademark registration
rights to the SCHWINN mark with the United
States Patent and Trademark Office(e.g. Reg. No. 371,422, issued September 26,
1939).
Respondent
registered the <schwinnscooter.com> domain name on January 26,
2004. Respondent is using the disputed
domain name to redirect Internet users to Respondent’s website which hosts a
search engine and offers
links to supplies of electric scooters, some of which
are direct competitors of Complainant.
The links also direct Internet users to a supplier of discount medical
equipment, a seller of wheelchairs, and a pool supply company. Respondent’s website also displays a section
entitled “popular searches” that provides active links to other topics
ostensibly related
to recreational/sports scooters such as those sold by
Complainant. Additionally, Respondent’s
website hosts numerous pop-up ads ranging from information about online
education programs to offers for
free gift cards in exchange for providing an
e-mail address and completing a survey.
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 that it has rights in the SCHWINN mark through registration with
the United States Patent and Trademark
Office and by continuous use of its mark
in commerce for at least the last one hundred and nine years. 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 <schwinnscooter.com>
domain name registered by Respondent is confusingly similar to Complainant’s
SCHWINN trademark because the domain name incorporates
Complainant’s mark,
adding only the generic or descriptive term “scooter.” Furthermore, the generic or descriptive term
describes a particular product sold by Complainant. 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 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; see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000)
finding that because the domain name <quixtar-sign-up.com> incorporates
in its entirety Complainant’s
distinctive mark, QUIXTAR, the domain name is
confusingly similar.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights to or legitimate interests in the <schwinnscooter.com>
domain name. 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 in support of its allegations, the burden shifts to Respondent
to show that it does have such rights or legitimate interests
pursuant to
Policy ¶ 4(a)(ii). See 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; 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”.
Moreover, where
Complainant makes the 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) (“In 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 <schwinnscooter.com> domain name to redirect Internet
users to a website that hosts a search engine and provides links to supplies of
electric scooters,
some of which are direct competitors of Complainant. The links also divert Internet users to a
supplier of discount medical equipment, a seller of wheelchairs, and a pool
supply company. Respondent’s website
also provides links to other websites related to recreational and sports
scooters similar to those sold by Complainant.
Additionally, Respondent’s website hosts numerous pop-up ads ranging
from information about online education programs to offers for
free gift cards
in exchange for providing an e-mail address and completing a survey. Respondent’s use of a domain name that is
confusingly similar to Complainant’s SCHWINN mark to redirect Internet users
interested
in Complainant’s products to commercial websites that provide links
to websites that compete with Complainant along with supplies
of other products
and services 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). See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) holding that Respondent’s use of confusingly
similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users
to websites featuring
pop-up advertisements was not a bona fide offering of
goods or services; see also Disney
Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
finding that Respondent’s diversionary use of Complainant’s mark to attract
Internet users
to its own website, which contained a series of hyperlinks to
unrelated websites, was neither a bona fide offering of goods or services
nor a
legitimate noncommercial or fair use of the disputed domain names.
Finally,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <schwinnscooter.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.
Respondent
registered and used the <schwinnscooter.com> domain name for
commercial gain. Respondent’s domain
name diverts Internet users wishing to search under Complainant’s well-known
SCHWINN mark to Respondent’s commercial
website through the use of a domain
name confusingly similar to Complainant’s mark. Respondent’s registration and use of the domain name, evidences
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) finding that Respondent registered and used the domain name in
bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website;
see also 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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) finding bad faith where Respondent attracted users to a website sponsored
by Respondent and created
confusion with Complainant’s mark as to the source,
sponsorship, or affiliation of that website.
Additionally,
Respondent registered the domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic
for Complainant to
Respondent’s website offering links to third party websites that compete with
Complainant. Registration of a domain
name for the primary purpose of disrupting the business of a competitor is
evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area; see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) finding that Respondent registered and used the domain name primarily for
the purpose of
disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark.
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 <schwinnscooter.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
November 29, 2004
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