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Generic Top Level Domain Name (gTLD) Decisions |
Promissor v. Web Domain Names
Claim
Number: FA0410000346305
Complainant is Promissor (“Complainant”), represented
by Paul Millhouser, 222 Berkeley St., Boston, MA 02116. Respondent is Web Domain Names (“Respondent”), 777 Mo Xue Fang Road, Shanghai,
PR, CN 435002.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <prommisor.com>, registered with Moniker
Online Services, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
18, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 18, 2004.
On
October 18, 2004, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <prommisor.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services,
Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
October 26, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 15, 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@prommisor.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 29, 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 <prommisor.com>
domain name is confusingly similar to Complainant’s PROMISSOR mark.
2. Respondent does not have any rights or
legitimate interests in the <prommisor.com> domain name.
3. Respondent registered and used the <prommisor.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Promissor, owns trademark rights for PROMISSOR through registration with the
United States Patent and Trademark Office
(e.g., Reg. No. 2,848,613, issued
June 1, 2004). Complainant’s trademark
registrations are for the use of the mark in connection with inter alia, books,
newsletters, pamphlets, manuals
and guides in the field of test development,
assessment and analysis, printed test forms, test booklets, printed
certificates and
consulting in professional occupational and vocational
testing. Although Complainant’s
trademark registration was issued on June 1, 2004, Complainant filed for
trademark registration on July 10,
2002, thereby pre-dating Respondent’s
registration of the <prommisor.com> domain name.
Respondent
registered the <prommisor.com> domain name on November 14, 2002
and is using the domain name to divert Internet users to a commercial website
providing links to
services that are similar to Complainant’s. The <prommisor.com> domain name
also hosts numerous pop-up advertisements and provides links to Complainant’s
competitors.
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 rights in the PROMISSOR mark under the Policy as a result of its
registration of its mark with the United
States Patent and Trademark
Office. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the
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. see also 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.”).
Complainant
contends that the Respondent’s <prommisor.com> domain name is
confusingly similar to Complainant’s PROMISSOR mark because the only difference
between the disputed domain name and
Complainant’s mark is the omission of the
letter “s” and addition of the letter “m.”
The disputed domain name is, in essence, a common misspelling of
Complainant’s mark. The Panel finds
that Respondent’s <prommisor.com> domain name is confusingly
similar to Complainant’s PROMISSOR mark.
See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) finding that, by misspelling words and adding letters to words, a
Respondent does not create
a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks; see also Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000) finding that Respondent’s domain name,
<americanonline.com>, is confusingly similar
to Complainant’s famous
AMERICA ONLINE mark; see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) finding that the domain names <beanybaby.com>,
<beaniesbabies.com>, <beanybabies.com>
are confusingly similar to
Complainant’s mark BEANIE BABIES.
Furthermore, the
addition of the generic top level domain “.com” is not sufficient to
distinguish the disputed domain name from Complainant’s
mark. 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 Blue Sky Software
Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) holding that
the domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"; see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since
use of a gTLD is required of domain name registrants".
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
failed to file a Response to the Complaint.
Therefore, Respondent may be considered to have implicitly admitted that
it lacks rights to and legitimate interests in the <prommisor.com>
domain name. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
finding no rights or legitimate interests where Respondent fails to respond.
The fact that Respondent uses a domain name that is confusingly similar
to Complainant’s PROMISSOR mark to host pop-ups and links
to businesses that
offer competing services in the educational testing field, does not evidence a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services; see
also Chip Merch., Inc. v.
Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) finding that the disputed
domain names were confusingly similar to Complainant’s mark and that
Respondent’s
use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods.
Furthermore,
there is nothing in the record that indicates that Respondent is commonly known
by the <prommisor.com> domain name pursuant Policy ¶ 4(c)(ii). See Tercent
Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS
information, and its failure to imply that Respondent is commonly
known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply; see also 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.
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent has
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet
users to businesses that offer
competing services with those services offered by Complainant. Respondent’s use of the <prommisor.com>
domain name establishes that Respondent registered the domain name primarily
for the purpose of disrupting the business of a competitor
pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) finding Respondent acted in bad faith by attracting
Internet users to a website that competes
with Complainant’s business; see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation from
Complainant's marks suggests that Respondent,
Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business; see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) finding that Respondent has diverted business from Complainant to a
competitor’s website in violation
of Policy ¶ 4(b)(iii).
Likewise, such
use establishes that Respondent has intentionally attempted to attract Internet
users to its website for commercial
gain by creating a likelihood of confusion
with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See
Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) finding that Respondent intentionally attempted
to attract Internet users to his website for commercial
gain by creating a
likelihood of confusion with Complainant’s mark and offering the same services
as Complainant via his website;
see
also Scholastic Inc. v.
Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) finding
bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain
name at issue
to resolve to a website offering similar services as Complainant
into the same market; see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally
attract users to a
direct competitor of Complainant.
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <prommisor.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 6, 2004
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