DECISION

Arminius Select Services Corporation v. Henry Chan

Claim Number:  FA0404000250830

PARTIES

Complainant is Arminius Select Services Corporation (“Complainant”), represented by Michelle Evans, of Gunn & Lee P.C., 700 N. St. Mary's Suite 1500, San Antonio, TX 78205.  Respondent is Henry Chan (“Respondent”), P.O. Box SS-6348-A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <columbia300bowling.com>, registered with iHoldings.com, Inc. d/b/a Dotregistrar.com.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 8, 2004; the Forum received a hard copy of the Complaint on April 12, 2004.

On April 12, 2004, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <columbia300bowling.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 April 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@columbia300bowling.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 May 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <columbia300bowling.com> domain name is confusingly similar to Complainant’s COLUMBIA 300 mark.

2. Respondent does not have any rights or legitimate interests in the <columbia300bowling.com> domain name.

3. Respondent registered and used the <columbia300bowling.com> domain name in bad faith.

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

FINDINGS

Complainant, Arminius Select Services Corporation, through its licensees, has manufactured bowling balls and bowling equipment since 1964 in the United States and around the world.  It registered the COLUMBIA 300 mark (Reg. No. 798,769) with the U.S. Patent and Trademark Office (“USPTO”) on November 16, 1965.

Respondent, Henry Chan, registered the <columbia300bowling.com> domain name on March 15, 2004.  Respondent is appropriating Complainant’s mark in connection with information about Complainant and bowling in general.  Respondent also uses Complainant’s mark it the text of its website at <columbia300bowling.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 rights in the COLUMBIA 300 mark as evidenced by it registration with the USPTO.  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 Panel finds that the <columbia300bowling.com> domain name is confusingly similar to the COLUMBIA 300 mark, the only difference is the elimination of the space between the words and the addition of the word “bowling,” which describes Complainant’s business.  Eliminating the spaces between the words and adding the word “bowling” does not significantly distinguish the <columbia300bowling.com> from Complainant’s COLUMBIA 300 mark.  See Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2d Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical); 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response.  The Panel may find that all reasonable allegations by Complainant are 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 Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it considers appropriate, if Respondent fails to comply with the Panel's requests for information).

Respondent is wholly appropriating Complainant’s mark to conduct its business and give information about Complainant’s goods and bowling in general.  The Panel finds that this is not 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 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 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).

There is nothing in the record, including Respondent’s WHOIS domain name registration information, which indicates that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one 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). 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using Complainant’s mark to sell and give information about Complainant’s goods and bowling.  The Panel finds that Respondent is attempting to disrupt a competitor’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant).

In addition, by not only appropriating Complainant’s mark in the domain name, but also appropriating it in the text of the website (at which the domain name resolves), the Panel finds that Respondent is trying to create a likelihood of confusion with the source of its goods.  The Panel finds that this is evidence of bad faith registration and use because Respondent is creating a likelihood of confusion for commercial gain, pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); 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).

The Panel finds that 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 <columbia300bowling.com> domain name be TRANSFERRED from Respondent to Complainant.

__________________________________________________________________

Judge Harold Kalina (Ret.), Panelist

Dated:  June 1, 2004

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