Student Price Card Ltd. v. Victor Trasoff
Claim Number: FA0911001292958
Complainant is Student Price Card Ltd. (“Complainant”), represented by Johnston Wassenaar LLP, Ontario, Canada. Respondent is Victor Trasoff (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <spccard.com>, registered with Go Daddy.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
G. Gervaise Davis III, Anne M. Wallace, Dr. Reinhard Schanda, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2009.
On November 4, 2009, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <spccard.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy 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 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 2009 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@spccard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed G. Gervaise Davis III, Anne M. Wallace and Dr. Reinhard Schanda, Chair, as Panelists.
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
Complainant contends that it has registered the following Trade marks in Canada: SPC CARD, STUDENT PRICE CARD, SPC, STUDENT SPC PRICE CARD & DESIGN, studentpricecard.com and spclive.com.
Complainant has continuously used its SPC; SPC CARD and STUDENT PRICE CARD trade-marks in Canada since 1992, for over 17 years. As a result of the Complainant’s substantial investment in development on the STUDENT PRICE CARD brand for almost two decades, a substantial amount of favorable consumer recognition and goodwill has become associated with its SPC; SPC CARD and STUDENT CARD trade-marks.
Therefore Complainant has established rights in the Marks by registering its marks with CIPO, and subsequent continuous use of the marks in commerce.
Furthermore Complainant is the owner and user of the domain names <spccard.ca> and <studentpricecard.ca>.
Complainant contends that the domain name at dispute is identical to the Complainant’s registered Canadian trademark for SPC CARD (TMA 724,771)
In addition, Respondent’s domain name is so confusingly similar a reasonable Internet user would assume its web site is somehow associated with Complainant’s mark.
The domain name spccard.com has the acronym of “spc” with the word “card” and “spc” is found in or is an acronym for the Complainant’s Canadian trademark registrations for SPC (TMA 504,080), STUDENT PRICE CARD (TMA 516,711), STUDENT PSPC PRICE CARD / DESIGN (TMA 504,160), studentpricecard.com (TMA 560,789), spclive.com (TMA 560,788), and application for SPC STUDENT PRICE CARD / DESIGN (application no. 1,445,658).
Complainant further contends that respondent has no rights or legitimate interests in or to the spccard.com domain name. Respondent has never been commonly known by the domain name; has not used or made demonstrable preparations to use the domain; is not making a legitimate noncommercial or fair use of the domain without intent for commercial gain; and Complainant has not in any manner authorized Respondent to use its marks.
Before any notice to the Respondent of the dispute, the Respondent did not use the domain name with a bona fide offering of goods or services. The Respondent used the domain name to link to a website which referred to “student price card”, “spc card”, “Register spc card”, “Register my spc card”, “Register for spc card” etc.
The Respondent has not been commonly known by the domain name, it is the Complainant who is commonly known by the domain name.
The Respondent owns about 443 domain names and votjatc@gmail.com (the Respondent’s contact e-mail address) is the contact on the WHOIS record of 618 domains.
Respondent was not making a legitimate noncommercial of fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Respondent used the domain name to link to a website which referred to the Complainant’s marks through the website’s use of the terms “student price card”, “spc card”, “Register spc card”, Register my spc card”.
Finally Complainant contends that Respondent’s domain name has been registered and was used in bad faith. Proof of the Respondent’s bad faith registration and use is unequivocal. At the time the Respondent registered the spccard.com domain on August 18, 2004, the Complainant operated for over 12 years under the SPC CARD Trade-marks.
The Respondent owns about 443 domain names and votjatc@gmail.com (the
Respondent’s contact e-mail address) is the contact on the WHOIS record of 618 domains.
The Respondent acquired the domain name spccard.com on August 18, 2004 primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The Respondent acquired the domain name spccard.com in 2004 well after the use and registration in the Canadian Trade-marks Office of the Complainant’s marks SPC in 1998; STUDENT PRICE CARD in 1999; STUDENT SPC PRICE CARD / DESIGN in 1998; spclive.com in 2002; and studentpricecard.com in 2002.
Respondent advertised the spccard.com domain is being for sale on the <spccard.com> domain name; a link to SEDO to bid on the domain name was provided on the website. The Respondent’s offer to sell the disputed domain name via a popular online auction site shows bad faith.
The Complainant bid $ 500 for the domain name through SEDO and the Respondent counter offered $ 10,000, a sum well in excess of any reasonable out-of-pocket costs related to the name. After the Complainant sent a cease and desist letter to the Respondent, he took down the website. The Respondent has stated that he would comply with the complainant’s cease and desist letter and transfer the domain to the Complainant, the Respondent later stated that he would cancel the domain. To date, the domain name has not been cancelled or transferred to the Complainant.
Respondent’s web site at <spcard.com> presently contains no content related to the domain name. According to Complainant passive holding of a domain name is further evidence of bad faith.
Through use of the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Complainant asserts that it does not have to prove Respondent’s actual knowledge of its marks at the time of registration. Moreover, Complainant asserts that for a period of time Respondent was using the confusingly similar domain name to attract Internet users to its website, which had links that comprised Complainant’s trade-marks or links confusingly similar to complainant’s trade-marks. Such diversion shows use of the domain name in bad faith.
As a result Complainant requests that the domain-name at dispute be transferred from Respondent to Complainant.
B. Respondent
Respondent did not submit any Response.
FINDINGS
The Panel finds that:
1. the Domain Name <spccard.com> is confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <spccard.com> and
3. the Respondent has registered and is using the Domain Name <spccard.com> in bad faith.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 asserts it offers a student loyalty program that offers a card that students may use to receive student discounts and deals on fashion, shoes, accessories, sporting goods, restaurants and more. Complainant contends it holds multiple trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for its SPC mark (e.g., Reg. No. TMA 504,080 issued November 16, 1998). Previous panels have held a trademark registration with a federal trademark authority is sufficient to establish rights in a complainant’s mark under Policy ¶ 4(a)(i). Since the Panel finds Complainant has registered its SPC mark with the CIPO, the Panel finds that Complainant has established rights in Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims Respondent’s <spccard.com> domain name is confusingly similar to Complainant’s SPC mark. Complainant argues the disputed domain name simply adds the descriptive term “card,” which describes Complainant’s product used to receive the student discounts offered by Complainant, and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found the addition of a descriptive term fails to adequately distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Past panels have also held that the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds Respondent’s <spccard.com> domain name is confusingly similar to Complainant’s SPC mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges it has not authorized Respondent to use the disputed domain name or Complainant’s SPC mark. Complainant provides the WHOIS information which identified Respondent as “Victor Trassoff.” Complainant claims the WHOIS information reveals that Respondent’s name does indicate a correlation to Complainant’s mark and the disputed domain name. The Panel finds that Respondent has failed to offer evidence proving Respondent is commonly known by the <spccard.com> domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Complainant claims Respondent’s <spccard.com> domain name formerly resolved to a website featuring hyperlinks to Complainant and to third-parties, some of which compete with Complainant in the discount card and credit card service industry. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant contends Respondent currently does not make an active use
of the <spccard.com> domain name. The Panel finds
Respondent’s failure to make an active use of the disputed domain name is not a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that
the respondent lacked rights or legitimate interests in a confusingly similar
domain name that it had not made demonstrable preparations to use since its
registration seven months prior to the complaint); see also George Weston
Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no
rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i)
or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain
name).
Complainant also asserts that Respondent has offered to sell the <spccard.com> domain name on the resolving website. Complainant asserts that the resolving website contains a hyperlink to SEDO to bid on the domain name. Complainant alleges that Complainant offered $500.00 for the disputed domain name, and Respondent counter-offered with $10,000. Complainant contends this amount exceeds Respondent’s out-of-pocket costs for the registration of the disputed domain name. Since the Panel finds Respondent has offered to sell the disputed domain name, the Panel is of the view that Respondent’s attempt to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the <spccard.com> domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Complainant alleges that Respondent has offered to sell the <spccard.com> domain name. Complainant contends Respondent’s website features a hyperlink to SEDO where Internet users may bid on the disputed domain name. Complainant argues Respondent registered the disputed domain name for the purpose of selling the disputed domain name for more than Respondent’s out-of-pocket costs. Complainant asserts that in response to Complainant’s initial offer of $500, Respondent counter offered $10,000 for the disputed domain name. The Panel finds Respondent registered the disputed domain name for the purpose of selling the disputed domain name for more than Respondent’s out-of-pocket costs. As a result the Panel finds Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant contends Respondent’s <spccard.com> domain name formerly resolved to a website that contains hyperlinks which link to Complainant and Complainant’s competitors in the discount and credit card services industry. Complainant alleges that Internet users, searching for Complainant and Complainant’s products, may instead have purchased discount card and credit card services from a competitor because of Respondent’s use of the confusingly similar disputed domain name. The Panel is of the view that Respondent’s use of the disputed domain name disrupts Complainant’s discount card and credit card business, which constitutes bad faith registration and use under Policy ¶ (b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel is of the
view that Respondent received click-through fees from the aforementioned
hyperlinks. Complainant argues that
Internet users, interested in Complainant, may have become confused as to
Complainant’s affiliation and sponsorship of the <spccard.com> domain name and resolving website.
Complainant claims Respondent attempted to profit from that
confusion. The Panel finds that
Respondent’s use of the <spccard.com>
domain name constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See
Univ. of Houston Sys. v.
Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”);
see also Bank of Am. Fork
v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the
respondent’s previous use of the <bankofamericanfork.com> domain name to
maintain a web directory was evidence of bad faith because the respondent
presumably commercially benefited by receiving click-through fees for diverting
Internet users to unrelated third-party websites).
Finally, Complainant claims Respondent is currently not making an active use of the disputed domain name. Complainant argues that Respondent’s inactive use of the <spccard.com> domain name is evidence of bad faith registration and use. The Panel finds Respondent’s inactive use of the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spccard.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Chair
G. Gervaise Davis III, Anne M. Wallace, Panelists
Dated: December 23, 2009
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