J. C. WHITNEY & COMPANY v. Web Services Pty
Claim Number: FA1002001308149
Complainant is J. C. WHITNEY & COMPANY (“Complainant”), represented by Mark
E. Wiemelt of Law Offices of Mark E. Wiemelt, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <j-c-whitney.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 16, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <j-c-whitney.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has 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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@j-c-whitney.com. Also on February 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <j-c-whitney.com>, is confusingly similar to Complainant’s JC WHITNEY mark.
2. Respondent has no rights to pr legitimate interests in the <j-c-whitney.com> domain name.
3. Respondent registered and used the <j-c-whitney.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, J.C. Whitney & Company, is an international developer of wholesale catalogues, online sales, and retail store services for automotive equipment and parts. Complainant owns numerous trademarks with the United States Patent and Trademark Office (“USPTO”) for its JC WHITNEY mark (e.g. Reg. No. 1,624,212 issued on November 20, 1990).
Respondent registered the <j-c-whitney.com> domain name December 8, 2004. Respondent’s disputed domain name resolves to a website that displays a link to Complainant’s official website, as well as third-party links to websites in competition with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns several trademarks with the USPTO for its
JC WHITNEY mark (e.g. Reg. No.
1,624,212 issued on November 20, 1990).
Complainant submits that its registration with the USPTO is evidence of
its legal rights in the JC WHITNEY mark.
Complainant further argues that its trademark registration need not be
in the country where Respondent resides for purposes of Policy ¶ 4(a)(i). The Panel finds
that Complainant has rights under Policy ¶ 4(a)(i) in
its JC WHITNEY mark through its registration with the USPTO, and further finds
that the trademark registration does not have to be within the country of
residence of Respondent for the purposes of Policy ¶ 4(a)(i) analysis. See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant contends that Respondent’s disputed <j-c-whitney.com> domain name is confusingly similar to its JC WHITNEY mark. Complainant urges that Respondent’s disputed domain name contains its JC WHITNEY mark in its entirety while merely adding hyphens to separate the “j” and “c” and the letter “c” from the word “whitney.” Complainant further contends that the addition of the generic top level domain (“gTLD”) “.com” is not sufficient to distinguish the disputed domain name from its mark. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where it adds hyphens to separate the letters and words of the mark and adds the gTLD “.com.” See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); 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). Therefore, the Panel finds that Respondent’s <j-c-whitney.com> domain name is confusingly similar to Complainant’s JC WHITNEY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <j-c-whitney.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. Once Complainant makes
a prima facie case the burden of
proof shifts to Respondent to show that it does have rights or legitimate
interests in the disputed domain name. See Domtar,
Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see
also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by
the complainant, the burden then shifts to the respondent to demonstrate its
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)). The Panel finds that Complainant made
a prima facie case. Due to the Respondent’s failure to respond to
these proceedings the Panel may assume that Respondent does not have any right
or legitimate interest in the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, this Panel reviews the
submission to determine whether the evidence suggests that Respondent has such
rights or interests before making a determination.
Complainant alleges that
Respondent is not commonly known by the <j-c-whitney.com> domain name and that Complainant has not granted Respondent
permission to use its JC WHITNEY mark.
The WHOIS information does not indicate that Respondent is commonly known
by the disputed domain name and Respondent offered no proof to that effect. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the <j-c-whitney.com> domain
name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant further
contends that Respondent’s use of a confusingly similar domain name to attract
Internet users to its website that display’s both a link to Complainant’s
official website as well as to competitor websites seeking to compete with
Complainant is evidence of Respondent’s lack of right and legitimate interests
in the <j-c-whitney.com> domain name. The Panel finds that Respondent’s use of the
confusingly similar domain name to divert Internet users to its website that
displays third-party links to Complainant and Complainant’s competitors is not a
bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171
(Nat. Arb. Forum May 3, 2006) (finding that the respondent’s
use of the disputed domain names to divert Internet users attempting to reach
the complainant’s website and in breach of the complainant’s affiliate program
is neither a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶
4(c)(iii)); see
also Skyhawke Techs., LLC v.
Tidewinds Group, Inc., FA 949608
(Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and it does not create a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant argues that
Respondent’s use of the <j-c-whitney.com>
domain name
to display third-party links to its competitors results in a disruption of
Complainant’s business. Complainant
contends that Respondent’s website leads to confusion for Internet users as to
the affiliation and ownership of the disputed domain name. The Panel finds that Respondent’s use of the
disputed domain name to display third-party links to Complainant’s competitors supports
findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Complainant further asserts that Respondent’s use of the disputed domain
name to attract Internet users to its website where it displays third-party
links to Complainant’s competitors, presumably for financial gain, is further
evidence supporting findings of bad faith registration and use. Complainant argues that Respondent receives
click-through fees or affiliate fees associated with the links it displays on
its website. The Panel finds that
Respondent’s use of the <j-c-whitney.com>
domain name
to attract Internet users to its website for financial gain is further evidence
of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969
(Nat. Arb. Forum July 18, 2006) (finding that the
respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant); see also Sports
The Panel finds that Complainant satisfied the elements of ICANN 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 <j-c-whitney.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 6, 2010
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