Fred W. Gretsch Enterprises, Ltd. v. DomCollect AG / Andre Schneider
Claim Number: FA1302001487957
Complainant is Fred W. Gretsch Enterprises, Ltd. (“Complainant”), represented by Lindsay M. Hagy of Goldberg Kohn Ltd., Illinois, USA. Respondent is DomCollect AG / Andre Schneider (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gretschguitars.org>, registered with 1 & 1 Internet AG.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2013; the National Arbitration Forum received payment on February 28, 2013.
On Mar 04, 2013, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <gretschguitars.org> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 March 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@gretschguitars.org. Also on March 4, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
(a) Complainant is a corporation organized under the laws of the state of Illinois engaged in the business of manufacturing and distributing musical instruments namely guitars and drums under, inter alia, the trademark GRETSCH.
(b) Complainant is the registered owner of the GRETSCH Mark with the United States Patent and Trademark Office (USPTO), U.S. Reg. Nos. 187744, 1574775 and 2542629.
(c)The domain name is confusingly similar to the GRETSCH
trademark as it includes the entirety of the trademark, the
descriptive or generic word “guitars” and the top level
domain”.org” which does not distinguish the domain name
from the trademark.
(a)Respondent is not commonly known by the Domain Name.
(b)Respondent's use of the Mark on Respondent's web pages is wholly unauthorized. Respondent, therefore, has no legitimate rights in the Domain Name.
(c)As at the time of a cease and desist letter sent on behalf of Complainant to Respondent, the latter was using the Domain Name to link to pages selling products from Complainant's competitors and this is not a fair use of the Domain Name.
(d)In its current iteration, Respondent is using the Domain Narne, as well as Complainant's Mark on Respondent's website, to redirect Internet traffic to third-party websites that offers goods completely unrelated to Complainant's products, and Respondent apparently uses the Domain Name to earn "click-through fees," which is not a bona fide offering of goods or services under Policy 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy 4(c)(iii).
(e) Further, Respondent should be considered to have no rights or legitimate interest in the Domain Name because Respondent's registration of the Domain Names is confusingly similar to Complainant's federally registered Mark.
(a) Respondent failed to discharge its responsibility to select, register and use a
domain name that does not infringe the rights of a third-party, namely
Complainant, in violation of Paragraph 2 of the ICANN Policy.
(b) Respondent is using the Domain Name in order to channel Internet users to
third-party websites selling both competing and unrelated products, which is
evidence of bad faith.
(c) Respondent's use of Complainant's mark both in the Domain Name and on its website establishes Respondent's intent to wrongfully associate itself with
Complainant for its own commercial gain.
(d) Complainant sent Respondent a cease and desist letter, but Respondent failed to respond to it, which further demonstrates Respondent's bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that has long been engaged in the business of manufacturing and distributing musical instruments,namely guitars and drums.
2. Complainant is the registered owner of the GRETSCH Mark with the United States Patent and Trademark Office (USPTO), by means of several registrations, namely U.S. Reg. Nos. 187744, 1574775 and 2542629 and Complainant has established trademark rights by way of those registrations. The Gretsch mark has been in use since 1912.
3. Respondent registered the disputed domain name on February 12, 2010 and it has since been used to link to pages selling products from Complainant's competitors and more recently to redirect Internet traffic to third-party websites that offer goods completely unrelated to Complainant's products from which Respondent on the balance of probabilities earns "click-through fees".
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or a service mark. Complainant claims that it has rights for its GRETSCH mark by way of registration with the United States Patent and Trademark Office (“USPTO”). In that regard Complainant has adduced evidence that it is the registered owner of the GRETSCH Mark registered with USPTO by means of U.S. Reg. Nos. 187744, 1574775 and 2542629 (collectively “ the GRETSCH mark”.).Complainant’s evidence is also to the effect that the trademark registered number 187744 was assigned to Complainant which currently has trademark rights in the mark. The Panel accepts that evidence.
Accordingly, the Panel finds that Complainant has rights in the GRETSCH mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second question is whether the disputed domain name is identical or confusingly similar to the GRETSCH mark. Complainant contends that the disputed domain name is confusingly similar to the GRETSCH mark. The Panel finds that it is. Complainant’s argument in that regard is that the domain name is confusingly similar to the GRETSCH trademark as it includes the entirety of the trademark and adds only the top level domain ”.org” and the generic or descriptive word “guitars” which do not distinguish the domain name from the trademark. The Panel agrees with that submission, which is supported by the decision cited by Complainant, Fred W. Gretsch Enterprises, Ltd. v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) which held that <gretschdrum.com> was confusingly similar to the mark GRETSCH when it was only differentiated by the addition of the word "drum" and the top-level domain ".com".
Moreover, the confusing similarity is emphasized by the fact that the evidence shows that Respondent is using the Domain Name in order to promote the sale or offering of goods that directly compete with Complainant's goods. The evidence is that Complainant sent Respondent a cease and desist letter dated February 12, 2013. At the time the cease and desist letter was sent, the website to which the disputed domain name resolved listed many different guitars for sale, including products from both Complainant and its competitors.The evidence also shows that at a later time, the website had been changed to a "link· farm" that provides links to a variety of different music related websites with content beyond Complainant's control.
Complainant has also adduced evidence of actual confusion in the market place which the Panel accepts. All of these matters show that the domain name is confusingly similar to the GRETSCH mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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) (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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s GRETSCH mark and to use it in its domain name, adding only the descriptive or generic word “guitars”, thus leaving the internet user with the impression that the domain name is an official domain name associated with Complainant which will lead to an official websites of Complainant dealing with the sale of GRETSCH guitars, which is not true;
(b)Respondent has then used the domain name to link to pages selling products from Complainant's competitors and more recently to redirect Internet traffic to third-party websites that offer goods completely unrelated to Complainant's products from which Respondent apparently earn "click-through fees";
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant claims that Respondent is not commonly known by the domain name. Having regard to the whole of the evidence and the likelihood of the situation as contended for by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. 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);
(e)Complainant also argues that Respondent has not made a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Complainant argues and the Panel accepts that the domain name has been used to promote goods and services in competition with those of Complainant and also to promote goods and services completely unrelated to Complainant’s products from which Respondent apparently earns click-through fees. As the Panel agrees with Complainant’s submissions regarding the use of the domain name, it finds that such use of the domain name is not a Policy ¶ 4(c) (i) bona fide offering of goods and services, nor is it a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See e.g., Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (finding that when a respondent used the domain name <gretschdrum.com> to link to products that competed with those of the Complainant, "[t]he competitive nature of Respondent's use of [the domain name] renders this use neither bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the [domain name] under Policy4(c)(iii)")). See also Meadowbrook, LLC d/b/a The Land of Nod v. Venkateshawara Distrib. Private Ltd, FA1112001419361 (Nat. Arb. Forum Jan. 24, 2012) (finding that using a domain name to display hyperlinks to the complainant's competitors and unrelated business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, as Complainant submits, the domain name should be considered to have been registered and used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third-party, namely Complainant, in violation of Paragraph 2 of the ICANN Policy. Clearly Respondent has violated that provision as it has taken Complainant’s trademark and used it without permission for an entirely illegitimate purpose. See Slep-Tone Entm't Corp. v. Dremann, FA2002000093636 (Nat. Arb. Forum Mar. 13, 2000).
Secondly, it is submitted by Complainant that Respondent is using the domain name in order to channel Internet users to third-party websites selling both competing and unrelated products, which is evidence of bad faith. There is no doubt that the evidence supports that contention and the Panel so finds. See Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011)(finding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith); Fred W: Gretsch Enterprises; Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (respondent acted in bad faith by using Complainant's mark to divert confused customers to websites selling competitors' products).
Thirdly, the facts as established by Complainant bring the case squarely within the express provisions of the Policy on bad faith and in particular Policy ¶ 4(b)(iii), prescribing that a respondent engages in bad faith by registering "the domain name primarily for the purpose of disrupting the business of a competitor") and Policy ¶ 4(b)(iv) , prescribing that a respondent engages in bad faith when "by using the domain name, [it has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location"); see the cases cited by Complainant : Meadowbrook, LLC d/b/a The Land of Nod v. Venkateshawara Distributor Private Ltd., FA1112001419361 (Nat. Arb. Forum Jan. 24, 2012) (finding that setting up a "click-through" website for which respondent likely receives revenue for each misdirected Internet user is evidence of bad faith); La-Z-Boy Chair Company v. CSRUS Enterprises, FA1103001377835 (Nat. Arb. Forum Apr. 21, 2011) (respondent's use of a domain name "to earn click-through fees by attracting Internet users to [a] pay-per-click directory website" demonstrated bad faith registration).
Fourthly, Complainant argues that Respondent's use of Complainant's mark both in the Domain Name and on its website establishes Respondent's intent to associate itself wrongfully with Complainant for its own commercial gain. The Panel agrees with that submission and so finds. See Stanley Furniture Company, Inc. v. Cellular Gadget, FA1211001471350 (Nat. Arb. Forum Dec. 31, 2012) (respondent's use of a complainant's mark to "attract Internet consumers to its own website in order to make a commercial profit by offering hyperlinks to business in competition with Complainant" was evidence of bad faith).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GRETSCH trademark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gretschguitars.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 2, 2013
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