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Generic Top Level Domain Name (gTLD) Decisions |
Babe Ease, LLC v. SiteVentures, LLC
Claim
Number: FA0410000352515
Complainant is Babe Ease, LLC (“Complainant”),
represented by James A. Sheridan, of Pandiscio & Pandiscio, P.C., 470 Totten Pond Road, Waltham, MA 02451. Respondent is SiteVentures, LLC (“Respondent”), 53 Stiles Road, Suite 204, Salem,
NH 03079.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <babeease.com> and <babe-ease.com>,
registered with Go Daddy Software, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
26, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 28, 2004.
On
October 27, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <babeease.com> and <babe-ease.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has
verified that Respondent
is bound by the Go Daddy Software, 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
November 2, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 22, 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@babeease.com and
postmaster@babe-ease.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
December 2, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Tyrus R.
Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <babeease.com> and
<babe-ease.com> domain names are confusingly similar to
Complainant’s BABE EASE mark.
2. Respondent does not have any rights or
legitimate interests in the <babeease.com> and <babe-ease.com>
domain names.
3. Respondent registered and used the <babeease.com>
and <babe-ease.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
produces fitted fabric covers that provide sanitary protection for infants and
toddlers, in restaurants and grocery stores.
Since its inception in August 1999, Complainant has continuously used
the mark BABE EASE in commerce in connection with its line of
baby
products. Complainant has filed for
trademark protection with the United States Patent and Trademark Office
(“USPTO”) for the BABE EASE name
(Serial. No. 78,389,064, filed March 23,
2004).
Respondent
registered the <babeease.com> and <babe-ease.com> domain
names on October 25, 2003. Respondent
is passively holding the domain names.
The domain names do not resolve to active websites.
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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to
establish rights in a mark if a common law
mark has been established. See
McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)
(The ICANN dispute resolution policy is “broad in scope” in that “the reference
to a trademark or service
mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark
or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not
require “that a
trademark be registered by a governmental authority for such
rights to exist”).
Complainant
has established rights in the BABE EASE
mark through ownership of a common law mark. A common law mark is
established when a complainant’s mark becomes distinctive and acquires
secondary meaning. Complainant established that through Complainant’s
continuous use of the BABE EASE mark in commerce since 1999,
Complainant’s mark
has acquired secondary meaning and has become distinctive. Thus, Complainant
has established secondary meaning
in the BABE EASE mark through its continuous
and exclusive use. Furthermore, Complainant’s pending trademark application for
the
BABE EASE mark further
supports Complainant’s ownership of a common law mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary
meaning was established); see also
S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
March 13, 2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark
through proof of secondary meaning associated with the
mark); see also Fishtech v.
Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that
Complainant has common law rights in the mark FISHTECH which it has used
since
1982).
Respondent’s
<babeease.com> domain name is identical to Complainant’s BABE EASE
mark because the domain name fully incorporates the mark, adds the generic
top-level
domain “.com” to the mark and omits the space between the words
“babe” and “ease.” The addition of the
generic top-level domain “.com” and the omission of the space between the words
“babe” and “ease” are insufficient
to distinguish the domain name from
Complainant’s mark under Policy ¶ 4(a)(i).
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); 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); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Additionally,
Respondent’s <babe-ease.com> domain name is confusingly similar to
Complainant’s BABE EASE mark because the domain name fully incorporates the
mark and merely
adds a hyphen. The mere
addition of a punctuation mark, such as a hyphen, is insufficient to overcome a
finding of confusing similarity under Policy
¶ 4(a)(i). See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum
Sept. 5, 2002) (“[T]he
absence of a space and the hyphen between the words of the mark are not changes
that are capable of overcoming a Policy ¶ 4(a)(i)
identical analysis.”);
see also Health Devices Corp. v. Aspen S T C, FA
158254 (Nat. Arb. Forum July 1, 2003) (“[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain names. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain names. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See 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"); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
According to the
Complaint, Respondent has been passively holding the disputed domain names and
has not connected them to active websites.
The Panel accepts this assertion as true. Passively holding a domain name does not evidence rights or
legitimate interests in a domain name pursuant to Policy ¶ 4(a)(ii). See TMP
Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he
Panel concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii).”); see
also Not My Kid, Inc. v. Sawchak, FA
167978 (Nat. Arb. Forum Sept. 23, 2003) (“[The] Panel
finds that the passive holding of the domain name is an indication that
Respondent does not have rights or legitimate interests
in the domain name.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered domain names that are confusingly similar to Complainant’s mark and
has passively held these domain names
since registration. The passive holding of the domain names is
sufficient to establish bad faith registration and use on behalf of Respondent
under Policy
¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the
domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); see
also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (holding that, despite Respondent’s decision to
passively hold the disputed domain name, “Respondent
has made its intention
clear and the continuing threat hanging over the Complainant’s head constitutes
bad faith use.”).
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 <babeease.com> and <babe-ease.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 16, 2004
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