CliC Goggles, Inc. v. iPage Hosting / Domain Manager
Claim Number: FA1105001389736
Complainant is CliC Goggles, Inc. (“Complainant”), represented by Malcolm Wittenberg of Bay Area Technology Law Group PC, California, USA. Respondent is iPage Hosting / Domain Manager (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clic-readers.com>, registered with Fastdomain Inc. Hereinafter referred to as: the "DOMAIN NAME".
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.
Hugues G. Richard, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2011; the National Arbitration Forum received payment on May 19, 2011.
On May 20, 2011, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the DOMAIN NAME is registered with Fastdomain Inc. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. 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 May 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@clic-readers.com. Also on May 27, 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.
A timely Response was received from Phillip Robbins, a third-party that is identified by registrar Fastdomain Inc. as being the actual registrant of the DOMAIN NAME. It would appear that for purposes of confidentiality, Phillip Robbins has availed himself of the privacy shield on the public WHOIS information, where “iPage Hosting” is currently listed as registrant of the DOMAIN NAME. iPage Hosting will nevertheless be considered as the Respondent in this proceeding. The Response is determined to be complete on June 7, 2011.
On June 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
Complainant requests that the DOMAIN NAME be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
a. The DOMAIN NAME is confusingly similar to Complainant’s federally registered trademarks "CLIC" and "CLIC MED".
b. Respondent has no rights or legitimate interests in respect of the DOMAIN NAME.
c. Respondent registered and used the DOMAIN NAME in bad faith.
B. Phillip Robbins makes the following assertions on behalf of the Respondent:
a. He has tried numerous times to disassociate himself from the DOMAIN NAME and the Complainant’s marks.
b. He was the original owner of the DOMAIN NAME, but it was never his intention to keep ownership of it, and he took it down before any business activity commenced.
c. He made several attempts to cancel ownership of the DOMAIN NAME with the registrar and desired that it be made available for others to purchase.
d. He will provide the Complainant with his complete cooperation.
1. Complainant is the owner of federally registered trademarks "CLIC" (U.S Registration No. 2,424,922) and "CLIC MED" (U.S Registration No. 3,190,173), both used in commerce in association with eyewear for several years.
2. The DOMAIN NAME is currently inactive and under registrar lock.
3. Respondent (or Phillip Robbins) does not contest the assertions of 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."
In view of Respondent's (or Phillip Robbins') failure to contest the Complainant’s assertions, 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 has established that it has rights in the CLIC and CLIC MED marks by virtue of its trademark registrations with the USPTO, and that it has been using these marks to sell eyewear (including “readers”) for many years. The Panel finds that these USPTO trademark registrations are conclusive evidence of Complainant’s rights in the CLIC and CLIC MED marks for the purposes of Policy ¶ 4(a)(i). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The DOMAIN NAME merely combines Complainant’s mark (CLIC) with the descriptive term “readers” (a popular product sold by the Complainant), a hyphen, and the generic top-level domain (“gTLD”) “.com.” The panel finds that adding a generic term, a hyphen and a gTLD to Complainant’s mark fails to distinguish the DOMAIN NAME. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Accordingly, the Panel concludes that the DOMAIN NAME is confusingly similar to Complainant’s CLIC and CLIC MED marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Earlier panels have found that once a complainant makes a prima facie case in support of its allegations, the burden of proof shifts from the complainant to the respondent to prove that it has rights under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant asserts that Respondent lacks rights and legitimate interests in the DOMAIN NAME. The Panel finds that Complainant has made a prima facie case. Because Respondent (or Phillip Robbins) has failed to contest the Complainant's assertions, the Panel is allowed to infer that Respondent does not have any rights or legitimate interests in the DOMAIN NAME. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules as it considers appropriate.”). Nonetheless, the Panel chooses to examine the record to make a determination of whether or not Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the DOMAIN NAME. The WHOIS information lists the registrant of the DOMAIN NAME as “iPage Hosting,” which Complainant alleges is not similar to the DOMAIN NAME. 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). Accordingly, the Panel finds that Respondent is not commonly known by the DOMAIN NAME under Policy ¶ 4(c)(ii); 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 alleges that Respondent formerly used the DOMAIN NAME to resolve Internet users to a website that sold counterfeit versions of Complainant’s sunglasses. The Panel finds that registering a confusingly similar domain name to sell counterfeit versions of Complainant’s products is not 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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”) ; see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant contends that Respondent currently uses the DOMAIN NAME to resolve Internet users to an inactive website. The Panel finds that such use demonstrates Respondent’s failure to provide 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)); See also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s former use of the DOMAIN NAME amounted to behavior that disrupted Complainant’s business. Respondent resolved Internet users, through the DOMAIN NAME, to a website selling counterfeit versions of Complainant’s products. The Panel finds that such use is disruptive to Complainant’s business, which is evidence of Respondent’s bad faith registration and use of the DOMAIN NAME under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant contends that Respondent benefitted financially from its former use of the DOMAIN NAME. Complainant asserts that Internet users reaching Respondent’s website were confused as to Complainant’s sponsorship of, and affiliation with, the counterfeit products being sold by Respondent. Complainant contends that Respondent benefitted from this confusion as Internet users likely purchased products from Respondent thinking they were purchasing products from Complainant. Accordingly, the Panel finds that such use is evidence of Respondent’s bad faith registration and use of the DOMAIN NAME under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Complainant alleges that Respondent currently uses the DOMAIN NAME to resolve Internet users to an inactive website. The Panel finds such use to be in bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that Complainant has satisfied 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 DOMAIN NAME be TRANSFERRED to Complainant.
Hugues G. Richard, Panelist
Dated: June 28, 2011
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