DECISION

Savin Corporation v. Cal Toner c/o Domain Manager

Claim Number:  FA0401000230934

PARTIES

Complainant is Savin Corporation, Stamford, CT (“Complainant”) represented by David A. Einhorn, of Anderson Kill & Olick, P.C., 1251 Ave. of the Americas, New York, NY 10020-1182.  Respondent is Cal Toner c/o Domain Manager, 5550 W. Wilshire Blvd., Los Angeles, CA 90210 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <savintoner.com> and <gestetnertoner.com>, registered with Enom, 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 January 22, 2004; the Forum received a hard copy of the Complaint on January 26, 2004.

On January 29, 2004, Enom, Inc. confirmed to the Forum that the domain names <savintoner.com> and <gestetnertoner.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 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@savintoner.com and postmaster@gestetnertoner.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 March 3, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <savintoner.com> and <gestetnertoner.com> domain names are confusingly similar to Complainant’s SAVIN and GESTETNER-related  marks.

2. Respondent does not have any rights or legitimate interests in the <savintoner.com> and <gestetnertoner.com> domain names.

3. Respondent registered and used the <savintoner.com> and <gestetnertoner.com> domain names in bad faith.

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

FINDINGS

Complainant owns the registration for the SAVIN mark, which was registered with the United States Patent and Trademark Office (“USPTO”) on October 10, 1967 (Reg. No. 836540).  The mark is used in connection with the development of liquid for photocopy machines, photocopying machines themselves, and copy paper for photocopy machines.  In addition, Complainant owns several other registrations for the SAVIN mark with the USPTO, including registration numbers: 1174900 (Oct. 27, 1981); 1500782 (Aug. 16, 1988; 2230303 (Mar. 9, 1999).

Complainant also owns several registration applications with the USPTO for marks containing the term GESTETNER, including: PREMIUM COPIER DP GESTETNER (Ser. No. 76/475593) (paper for use with business machinery); GDP DUAL-PURPOSE GESTETNER (Ser. No. 76/475768) (paper and recycled paper for use with business machinery); GESTETNER 3-UP CARDS (Ser. No. 76/493424) (converted paper product which is comprised of strips of attached index cards which can be printed using a laser printer or a photocopier and then separated into individual index cards at perforations). 

Gestetner was first incorporated in 1881 and merged with Savin Corporation in 1988.

Respondent registered the disputed domain names <savintoner.com> and <gestetnertoner.com> on January 19, 2003 and October 2, 2003, respectively.

Respondent is using the <savintoner.com> domain name to sell Complainant’s toner products that are used with Complainant’s office equipment.

Respondent is not using the <gestetnertoner.com> domain name to connect to any site other than one hosted by the registration service provider NameCheap.com.  The attached website merely states that the domain name was recently registered and offers information on purchasing or transferring domin names through NameCheap.com.

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 rights in the SAVIN mark through multiple registrations with the USPTO and continuous use in commerce since 1960. 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 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 Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The combined facts that Complainant owns multiple trademark applications for marks containing the term GESTETNER and that the mark has been in use since the incorporation of the former Gestetner company in 1880, which merged with Complainant in 1998, establish Complainant’s rights in the GESTETNER mark under the Policy. 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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

The disputed domain names are confusingly similar to Complainant’s marks.  In this context, it is obvious that the <savintoner.com> domain name contains Complainant’s SAVIN mark in its entirety.  Furthermore, the term GESTETNER is the principal element of the trademarks applied for with the USPTO.  Respondent has merely added the generic or descriptive term “toner” to the marks, which describes the specific type of products sold by Complainant, which fails to sufficiently distinguish the domain names from Complainant’s marks.  Moreover, the addition of a generic top-level domain is irrelevant under the Policy.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy”); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; 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 Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark; see also Westfield Corp., Inc. 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) finding that the addition of a top-level domain is without legal significance.

Therefore, Complainant has successfully established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Failing to submit a Response to a Complaint has consistently been construed as an implicit admission that a Respondent lacks rights to and legitimate interests in a domain name.  In this case, the Panel chooses to adopt this approach.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also 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; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint; see also Vert. 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.

Having failed to respond to the Complaint, Respondent has passed on the opportunity to present evidence to show that Respondent is commonly known by the disputed domain names.  As such, there is nothing in the record to indicate that Respondent has rights or legitimate interests in the names pursuant to Policy ¶ 4(c)(ii).  In addition, Respondent is not authorized to use Complainant’s marks. 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 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name; see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant.

Respondent is not using the disputed domain name <savintoner.com> in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent has appropriated Complainant’s SAVIN mark in the name in order to sell Complainant’s goods in direct competition with Complainant. See Computerized Sec. Sys., Inc. d/b/a SAFLOK 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 Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website; 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. 

In regard to the <gestetnertoner.com> domain name, Respondent has failed to offer demonstrable evidence of its preparations to use the name in connection with a website.  Merely connecting the name to a portal website does not convey rights or legitimate interests in the name.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question; see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services; see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name; see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A Respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that Respondent might be capable of doing otherwise.); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”.

Therefore, Complainant has successfully established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed domain name <savintoner.com> in bad faith pursuant to Policy ¶ 4(b)(iv) because the name is confusingly similar to Complainant’s SAVIN mark and Respondent is using the name to intentionally divert potential customers of Complainant to Respondent’s website for commercial gain.  See 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 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.

Respondent also registered and is using the <gestetnertoner.com> domain name in bad faith because it has not shown demonstrable preparations to use the domain name and merely resolves the name to a site sponsored by its registration service provider.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy; see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that merely holding an infringing domain name without active use can constitute use in bad faith; see also 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.

Therefore, Complainant has established Policy ¶ 4(a)(iii).

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 <savintoner.com> and <gestetnertoner.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  March 16, 2004

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