Aiden Fung v. terry zimmer
Claim Number: FA1107001396869
Complainant is Aiden Fung (“Complainant”), represented by Aiden Fung, California, USA. Respondent is terry zimmer (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <divinecasket.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 July 4, 2011; the National Arbitration Forum received payment July 4, 2011.
On July 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <divinecasket.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 agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@divinecasket.com. Also on July 12, 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 August 4, 2011, 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 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. The domain name that Respondent registered, <divinecasket.com>, is confusingly similar to Complainant’s DIVINE CASKETS mark.
2. Respondent has no rights or legitimate interests in the <divinecasket.com> domain name.
3. Respondent registered and used the <divinecasket.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aiden Fung, owns the DIVINE CASKETS mark. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,795,641 filed October 6, 2009; registered June 1, 2010). The mark is used in connection with Complainant’s online retail store services providing such items as caskets, urns, grave makers, and coffins.
Respondent, terry zimmer, registered the <divinecasket.com> domain name December 28, 2008. The disputed domain name resolves to a website that sells funeral-related products that compete with 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."
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 contends that it has rights in the DIVINE CASKETS mark. A complainant who registers a trademark with a federal trademark authority, according to Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) and Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), has established rights in its mark. Complainant registered its DIVINE CASKETS mark with the USPTO (Reg. No. 3,795,641 filed October 6, 2009; registered June 1, 2010). Past panels have held that a complainant’s rights in a mark date back to the filing date. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”). Therefore, the Panel finds that Complainant has rights in the DIVINE CASKETS mark under Policy ¶ 4(a)(i), dating back to October 6, 2009.
Complainant contends that the <divinecasket.com> domain name is confusingly similar to its mark. The Panel finds that Respondent’s deletion of the letter “s” at the end of Complainant’s mark is insufficient to differentiate the domain name from the mark. See Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com> "effectively identical and certainly confusingly similar" to the complainant's AMERICAN AIRLINES registered marks). The Panel further finds that the deletion of the space between the words of Complainant’s mark in the domain name is similarly insufficient. This is evident by cases such as Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007). Finally, this Panel finds that the addition of a generic top-level domain (“gTLD”) fails to distinguish a disputed domain name from the mark it is allegedly infringing upon. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Respondent deleted the second “s” in the mark as well as the spaces between the mark. The gTLD “.com” was added to the mark in the domain name.
The Panel finds that the <divinecasket.com> domain name is confusingly similar to Complainant’s DIVINE CASKETS mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainants must make a prima facie case showing rights in a mark before the burden shifts to the respondent to establish that it has such rights to or legitimate interests in the domain name containing a Complainant’s mark. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case to support its claim. The Respondent, having failed to submit a response to the Complaint, has given the Panel license to presume that Respondent does not contradict Complainant’s claims. See 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); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
However, this Panel still reviews the record for information demonstrating that Respondent does have rights and legitimate interests in the <divinecasket.com> domain name.
Being commonly known by a domain name may confer rights or legitimate interests on Respondent. The WHOIS information for the <divinecasket.com> domain name lists “Domains by Proxy, Inc.” as the domain name registrant. As the disputed domain name’s content is not reflected in the registrant listing, the Panel finds that this does not suggest a connection between the disputed domain name and Respondent. Additionally, Complainant argues that Respondent has not been authorized to use the DIVINE CASKETS mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Domain names may not be confusingly similar to a registered trademark and fail to offer either a bona fide offering of goods and services or a legitimate noncommercial or fail use. Past panels have found that the redirection of Internet users to a website selling products that compete with the complainant is neither of these protected uses. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business 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 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.”). Respondent’s <divinecasket.com> domain name resolves to a website that sells funeral-related products that compete with the products that Complainant sells. Therefore, the Panel finds that Respondent’s use of the <divinecasket.com> domain name is not a bona fide offering of goods and services and it is not a legitimate noncommercial or fair use.
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).
Where the registration of a disputed domain name predates the filing date of a registered trademark and the Complainant fails to provide evidence of common law rights in a mark prior to the date the disputed domain name was registered, bad faith registration has not been shown. See Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel). Respondent registered the disputed domain name December 28, 2008. Complainant registered the DIVINE CASKETS mark June 1, 2010 and filed for the mark on October 6, 2009. Although Complainant contends that it has been using its mark since September 11, 2007, Complainant offered no evidence of this use or any secondary meaning acquired by its use.
Therefore, the Panel finds that Complainant has not established that the <divinecasket.com> domain name was registered in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant failed to establish the elements of ICANN Policy ¶ 4(a)(iii).
Complainant’s having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <divinecasket.com> domain name REMAIN WITH Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 18, 2011.
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