Fred Hayman v. DNS Manager / Cenal.com
Claim Number: FA1101001370359
Complainant is Fred Hayman (“Complainant”), represented by Philip Nulud of Kleinberg & Lerner, LLP, California, USA. Respondent is DNS Manager / Cenal.com (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is identical <fredhayman.com>, registered with Moniker.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on January 31, 2011.
On February 4, 2011, Moniker.com confirmed by e-mail to the National Arbitration Forum that the <fredhayman.com> domain name is registered with Moniker.com and that Respondent is the current registrant of the name. Moniker.com has verified that Respondent is bound by the Moniker.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@fredhayman.com. Also on February 7, 2011, 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 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. Respondent’s <fredhayman.com> domain name is identical to Complainant’s FRED HAYMAN mark.
2. Respondent does not have any rights or legitimate interests in the <fredhayman.com> domain name.
3. Respondent registered and used the <fredhayman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fred Hayman, creates, markets, and sells fragrances. Complainant conducts its business under the FRED HAYMAN mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,549,727 issued August 1, 1989).
Respondent registered the <fredhayman.com> domain name on June 26, 2002. The disputed domain name resolves to a websites featuring hyperlinks to third-party websites that compete with Complainant’s fragrance business.
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 rights in the FRED HAYMAN mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,549,727 issued August 1, 1989). Previous panels have found that registration of a mark with a federal trademark authority, such as the USPTO, sufficiently establishes rights in the mark under the Policy. Therefore, the Panel finds that Complainant has established rights in the FRED HAYMAN mark pursuant to Policy ¶ 4(a)(i). See 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that the <fredhayman.com> domain name is identical to Complainant’s mark. The disputed domain name incorporates Complainant’s entire mark and differs only by the removal of the space between the terms of the mark and the addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that removing the space between the terms of an established mark, in addition to the incorporation of a gTLD, are insufficient in creating a unique domain name that falls outside the realm of confusing similarity with Complainant’s FRED HAYMAN mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Policy finds Policy ¶ 4(a)(i) has been established.
Complainant possesses the initial burden of making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has met its burden, the burden then shifts to Respondent in order to prove it has rights in the disputed domain name. The Panel determines that Complainant has met its burden and because Respondent failed to respond to these proceedings, the Panel presumes Respondent does not possess any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel chooses to examine the record to determine if Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <fredhayman.com> domain name and that Respondent is not authorized to use the FRED HAYMAN mark. The Panel searched the record, including the WHOIS information, and could not find any evidence that would support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 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 alleges that Respondent uses the disputed domain name to resolve unsuspecting Internet users to a website containing hyperlinks to the websites of Complainant’s competitors in the distribution and sale of fragrances. Complainant alleges that Respondent receives click-through fees from the links posted on the disputed domain name and resolving website. The Panel finds that Respondent’s use of an identical domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Policy finds Policy ¶ 4(a)(ii) has been established.
Respondent’s <fredhayman.com> domain name resolves Internet users to a website featuring hyperlinks to the websites of Complainant’s competitors. Respondent’s domain name registration seeks to profit from Internet users’ recognition of Complainant’s FRED HAYMAN mark, while also disrupting Complainant’s fragrance business. Given Complainant’s rights in the mark, the Panel finds that Respondent’s disruption of Complainant’s business, is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel presumes that Respondent receives click-through fees in return for redirecting Internet users to the websites of Complainant’s competitors. Internet users looking for Complainant’s products may end up purchasing similar products from Complainant’s competitors because of Respondent’s use of the disputed domain name. Furthermore, the Panel believes that Internet users are likely to be confused as to Complainant’s sponsorship of, and affiliation with the disputed domain name, resolving website, and featured hyperlinks. The Panel finds that Respondent’s use of the disputed domain name for commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Policy finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fredhayman.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 17, 2011
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