Trijicon, Inc. v. chris dicicco
Claim Number: FA1011001357038
Complainant is Trijicon, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is chris dicicco (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trijiconriflescopes.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 November 6, 2010.
On November 8, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trijiconriflescopes.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 November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@trijiconriflescopes.com by e-mail. Also on November 12, 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 December 3, 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 (the "Rules") "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, <trijiconriflescopes.com>, is confusingly similar to Complainant’s TRIJICON mark.
2. Respondent has no rights to or legitimate interests in the <trijiconriflescopes.com> domain name.
3. Respondent registered and used the <trijiconriflescopes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trijicon, Inc., owns the exclusive rights to its TRIJICON mark, which it uses in connection with its manufacturing and sales of night scopes for military and civilian rifles. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TRIJICON mark (e.g., Reg. No. 1,390,617 issued April 22, 1986).
Respondent, chris dicicco, registered the <trijiconriflescopes.com> domain name June 24, 2009. The disputed domain name resolves to a commercial website featuring real estate services.
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 as 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 contends that it has established rights in the TRIJICON mark. The Panel finds that trademark registration with a federal trademark authority is sufficient to establish rights in a mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant holds numerous trademark registrations with the USPTO for its TRIJICON mark (e.g., Reg. No. 1,390,617 issued April 22, 1986). Therefore, the Panel finds that Complainant established rights in its TRIJICON mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed <trijiconriflescopes.com> domain name is confusingly similar to Complainant’s TRIJICON mark. The disputed domain name includes Complainant’s entire TRIJICON mark, adds the terms “rifle” and “scopes,” which are descriptive of Complainant’s business, and adds the generic top-level domain (“gTLD”) “.com.” Earlier panels have found that addition of descriptive terms and a gTLD do not sufficiently distinguish a disputed domain from a complainant’s mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for 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).”).
Therefore, this Panel finds that Respondent’s <trijiconriflescopes.com> domain name is confusingly similar to Complainant’s TRIJICON mark pursuant to Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <trijiconriflescopes.com> domain name. When a complainant makes a prima facie case to support its allegations, the burden of proof shifts to the Respondent to show that it does have such rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Because Respondent failed to respond to the complaint, the Panel may make an inference that Respondent lacks rights or legitimate interests in the <trijiconriflescopes.com> 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
This Panel still examines the evidence however before making a final determination as to Respondent’s rights or legitimate interests. Here, Respondent did not present evidence to show that it is commonly known by the disputed domain and the record on its fact suggest no nominal relationship between the disputed domain name and Respondent. The WHOIS information identifies the domain name registrant as “chris dicicco.” There is no other indication that Respondent has been commonly known by the <trijiconriflescopes.com> domain name. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain pursuant to a Policy ¶ 4(c)(ii) analysis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also urges that it has not authorized Respondent to use its TRIJICON mark. Yet, Respondent uses the <trijiconriflescopes.com> domain name to direct Internet users to a commercial website featuring real estate services. The Panel finds that the unauthorized commercial use of a Complainant’s mark does not constitute a bona fide offering of good or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly alleges that Respondent registered and used the disputed domain name in bad faith. Respondent uses the disputed domain, which is confusingly similar to Complainant’s TRIJICON mark, for its own commercial gain. The services it advertises on the disputed domain site attracts Internet traffic through its use of Complainant’s mark. The Panel finds that this use supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; 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 <trijiconriflescopes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 15, 2010.
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