Cross Optical Group, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1110001412176
Complainant is Cross Optical Group, Inc. (“Complainant”), represented by John Cyril Malloy, III of Malloy & Malloy, P.A., Florida, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <costasunglasses.com>, registered with RegisterMatrix.com Corp.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2011; the National Arbitration Forum received payment on October 19, 2011.
On October 25, 2011, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <costasunglasses.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 November 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@costasunglasses.com. Also on November 1, 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 and determined to be complete on November 21, 2011.
On November 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <costasunglasses.com> domain name is identical or confusingly similar to Complainant’s mark, in support of this Complainant asserts that
· it has rights in the COSTA mark and other related marks because it has registered the following marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Reg. Date
COSTA DEL MAR 1,723,449 October 13, 1992
COSTAS 3,773,612 April 6, 2010
COSTA 400 3,572,542 February 10, 2009
COSTA 580 3,711,018 November 17, 2009
COSTA 3,857,379 October 5, 2010
· it has several trademark registrations with other national trademark authorities including those with IP Australia for the COSTA mark (Reg. No. 1393286 registered November 9, 2010), COSTA 580 mark (Reg. No. 1393285 registered November 9, 2010), and COSTA DEL MAR marks (Reg. No. 971993 registered May 1, 2003),
· <costasunglasses.com> domain name incorporates its COSTA trademark and the descriptive term “sunglasses,” in addition to the generic top-level domain (“gTLD”) “.com.”,
· domain name is confusingly similar to its mark under Policy ¶ 4(a)(i) because the addition of a descriptive term and a gTLD does not distinguish a disputed domain name from a mark.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· Respondent is not commonly known by the disputed domain name or any variation of the COSTA mark,
· submitted evidence shows that Respondent is using the domain name to host a website consisting of third-party links to both competing and unrelated hyperlinks.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
· Respondent registered the domain name in order to prevent Complainant from reflecting its marks in a domain name,
· the disputed domain name actively disrupts Complainant’s business by sending Internet users to other sunglass makers’ websites,
· Respondent registered and is using the domain name to intentionally attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the domain name,
· Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the COSTA mark.
B. Respondent
Respondent argues that its <costasunglasses.com> domain name is not identical or confusingly similar to Complainant’s mark, in support of this Respondent asserts that
· the COSTA DEL MAR mark is to be considered as the only valid mark in this dispute,
· it has made sufficient changes to the mark in the domain name,
· the disputed domain name is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s mark.
Respondent argues that he has rights and legitimate interests in the disputed domain name. In support of this Respondent asserts that
· the terms of the <costasunglasses.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
Respondent argues that he did not register and does not use the disputed domain names in bad faith. In support of this Respondent contends that
· the <costasunglasses.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s COSTA DEL MAR mark,
· the registration and use of a domain name comprising such common terms is not necessarily done in bad faith,
· it registered the disputed domain name in 2005, which is before Complainant shortened its brand name,
· at the time of registration Complainant only had one valid trademark for the term COSTA DEL MAR, which in itself is not given wide protection outside of Complainant’s registration,
· its domain name is not even similar to the mark that Complainant held at the time it registered the domain name and that it therefore could not have had bad faith intent at registration.
Complainant is the owner of the "COSTA DEL MAR", "COSTAS", "COSTA 400", "COSTA 580" and "COSTA" trademarks which are registered with the United States Patent and Trademark Office.
According to the registry documents, Complainant first used in commerce the mark "COSTA DEL MAR" in 1983 in relation to sunglasses, the mark "COSTA 400" and "COSTA 580" in 2005 in relation to sunglasses.
Respondent registered the disputed domain name on December 6, 2005.
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."
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.
The Panel notes that ownership of a federally registered trademark and several trademark registrations with other national trademark authorities is strong evidence of a Complainant’s rights in the asserted marks under Policy ¶ 4(a)(i). See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006); Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent asserts that the <costasunglasses.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark.
Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i))
Respondent's asserts that COSTA DEL MAR mark is to be considered the only valid mark in this dispute since the domain name was registered on December 6 2005. Respondent claims and that it has made sufficient changes to this mark in the domain name.
Panel finds that the dominant element of the COSTA DEL MAR mark is the word "COSTA", which is also supported by Complainant's trademark family consisting of the marks COSTA 400, COSTA 580 and COSTA which all comprise the word "COSTA" as dominant element. Complaint submitted sufficient evidence to prove that the marks COSTA 400 and COSTA 580 were used as early as 2005 by the Complainant which also supports that the complainant had rights in the name COSTA already at the time of the domain registration. Therefore, Panel finds that the disputed domain name should be compared to the dominant element which is the word "COSTA".
Since the disputed domain name incorporates the dominant element of the trademarks and the descriptive term “sunglasses,” in addition to the generic top-level domain (“gTLD”) “.com, therefore the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
As to the second element, 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Panel finds that the WHOIS information for the disputed domain name identifies “PrivacyProtect.org / Domain Admin” as the registrant, therefore Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant submitted sufficient evidence to prove that the website under the domain name contains third-party links and links to Complainant's competitors (e.g., Ray-Ban, Oakley), therefore the Respondent's use of the confusingly similar domain name 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Regarding Respondent's assertion that the terms of the <costasunglasses.com> domain name are common and generic, therefore Complainant does not have an exclusive monopoly on the terms on the Internet, the Panel finds that the trademark registrations of Complainant which incorporate the word "COSTA" is sufficient evidence that it is not a generic word. Panel notes that in its opinion the word "COSTA" is not a generic term in relation to sunglasses.
The Panel finds that sufficient evidence was submitted to by Complainant (Exhibit R) to establish that the website under the disputed domain name is used to host links to the Complainant's competitors.
Therefore, Panel finds that disputed domain name actively disrupts Complainant’s business by sending Internet users to other sunglass makers’ websites, therefore Panel agrees with Complainant, that Respondent registered and is using the domain name in bad faith 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <costasunglasses.com> domain name be TRANSFERRED from Respondent to Complainant.
dr. Katalin Szamosi, Panelist
Dated: December 13, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page