Mine O'Mine, Inc. v. Satoshi Shimoshita
Claim Number: FA1104001383247
Complainant is Mine O'Mine, Inc. (“Complainant”), represented by Jennifer Ko Craft, Nevada, USA. Respondent is Satoshi Shimoshita (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkman.com>, registered with eNom.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2011; the National Arbitration Forum received payment on April 12, 2011.
On April 13, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <dunkman.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.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 April 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@dunkman.com. Also on April 14, 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 May 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <dunkman.com> domain name is identical to Complainant’s DUNKMAN mark.
2. Respondent does not have any rights or legitimate interests in the <dunkman.com> domain name.
3. Respondent registered and used the <dunkman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mine O'Mine, Inc., uses the DUNKMAN mark in connection with a variety of goods and services, including footwear and apparel. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its DUNKMAN mark (Reg. No. 2,919,666 filed August 16, 2001; issued January 18, 2005).
Respondent, Satoshi Shimoshita, registered the <dunkman.com> domain name on November 19, 2001. The disputed domain name resolves to a parked, pay-per-click website, which displays links in competition with that of Complainant’s 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 claims its registration with the USPTO is sufficient to establish its rights in the DUNKMAN mark pursuant to Policy ¶ 4(a)(i) (Reg. No. 2,919,666 issued August 16, 2001; issued January 18, 2005). The Panel finds registration with a federal trademark authority satisfactorily shows Complainant’s rights, dating back to the filing date of the mark. 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends that Respondent’s <dunkman.com> domain name is identical to its DUNKMAN mark. The disputed domain name contains Complainant’s entire DUNKMAN mark and only differs by the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have found that, pursuant to Policy ¶ 4(a)(i), adding a gTLD to a mark does nothing to distinguish it from a complainant’s mark. 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). Accordingly, the Panel finds that Respondent’s <dunkman.com> domain name is identical to Complainant’s DUNKMAN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant makes the argument that Respondent does not have any rights or legitimate interests in the disputed domain name. Previous panels have determined that as long as a complainant makes a prima facie case in support of its position, as is the case here, the burden of proof will shift to the respondent to prove its rights or legitimate interests under Policy ¶ 4(a)(i). Further, when a respondent fails to respond to a complaint, the Panel may accept Complainant’s allegations as true. Because of Respondent’s failure to respond, the Panel infers that it does not have rights or legitimate interests in the <dunkman.com> domain name. See 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)); 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). Nevertheless, the Panel chooses to further examine the record to see if Respondent has rights or legitimate interests under Policy ¶ 4(c).
When there is no evidence set forth in the record to indicate that a respondent has been commonly known by a disputed domain name, the Panel may determine that said respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). Such is the case here where Complainant asserts that Respondent has not been authorized to use the DUNKMAN mark, the WHOIS information identifies the domain name registrant as “Satoshi Shimoshita,” and Respondent provides no further evidence to show otherwise. Thus, the Panel finds that Respondent does not have rights or legitimate interests in the <dunkman.com> domain name pursuant to 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).
Respondent uses the disputed domain name as a parked website, offering pay-per-click links which are in competition with Complainant’s business. The Panel finds that this does 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 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent uses the disputed domain to display links which, when clicked, redirect Internet users to websites offering goods and services in competition with Complainant. The Panel finds this to be a disruption of Complainant’s business and evidence of bad faith registration and use under 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).”).
Complainant argues that Respondent uses the disputed domain name in an attempt to confuse Internet users who, when reaching Respondent’s website, are likely to misunderstand a connection between the two. The Panel infers that Respondent likely profits from this when Internet users click-through the links displayed at Respondent’s page. The Panel finds this to constitute bad faith registration and use pursuant to 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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkman.com> domain name be TRANSFERRED/CANCELLED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 20, 2011
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