O.C. Seacrets, Inc. v. CRIVADRON.COM / Christiam R
Claim Number: FA1303001488478
Complainant is O.C. Seacrets, Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright, PLLC, District of Columbia, USA. Respondent is CRIVADRON.COM / Christiam R (“Respondent”), Ecuador.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seacretsbar.com>, registered with NetEarth One Inc. d/b/a NetEarth.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2013; the National Arbitration Forum received payment on March 5, 2013.
On March 4, 2013, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the National Arbitration Forum that the <seacretsbar.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@seacretsbar.com. Also on March 8, 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 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <seacretsbar.com> domain name, the domain name at issue, is confusingly similar to Complainant’s SEACRETS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1988, Complainant has offered, sold and promoted its bar and restaurant services, as well as related services and products, under the SEACRETS mark. Complainant promotes its services and products on its websites on the Internet, as well as in print, radio and television advertisements. Complainant owns United States Registration No. 2,102,604 for the mark SEACRETS issued October 7, 1997 for restaurant and bar services in Class 42.
Respondent registered the <seacretsbar.com> domain name at issue on October 15, 2009. Shortly following that, Respondent has used the associated website to promote a bar known as “Secrets Ecuador” which is in no way affiliated with Complainant but which features use of the SECRETS mark.
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.”).
As noted above, Complainant owns United States Registration No. 2,102,604 for the mark SEACRETS issued October 7, 1997 for restaurant and bar services in Class 42. Accordingly, Complainant has established its rights in the mark for the purposes of Policy ¶ 4(a)(i) by having registered the mark with the USPTO. Even though it appears that Respondent does not reside in the USA, the Policy does not require Complainant to register its mark in the same country where Respondent resides and operates. See 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.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Previous panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN). Furthermore, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of the domain name at issue and the TRUE VALUE mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (Nat. Arb. Forum Jan. 21, 2003). Moreover, the addition of a common or generic term to a trademark (“bar” in this case”) does nothing to reduce the domain name’s confusing similarity. See Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (“The addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights.”); Parfums Christian Dior v. 1 Netpower, Inc., No. D2000-0022 (WIPO March 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).
In this case, the domain name at issue contains the SEACRETS mark in its entirety, adding only the descriptive term “bar” and the top-level domain, .com. These minor differences are insufficient to distinguish the <seacretsbar.com> from the SEACRETS mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent does not have a legitimate interest in the SEACRETS brand name or the domain <seacretsbar.com>. Respondent is not affiliated with Complainant or with its SEACRETS bars. Respondent is neither licensed nor authorized to use the domain name which means that Respondent has no legitimate interest in the domain. Choice Hotels Int’l, Inc. v. Dinoia, No. FA0406000282792 (NAF July 28, 2004) (finding that Respondent lacks rights and legitimate interests in the disputed domain names because Respondent registered the domain names without legal authorization to do so). Respondent has used the associated website to promote a bar known as “Secrets Ecuador” which is in no way affiliated with Complainant but which features the unauthorized use of the SECRETS mark. As a result of this prima facie case made by Complainant, evidence must be produced by Respondent to overcome the presumption that Respondent has no rights or legitimate interests in the disputed domain names. See Facton Ltd. v. Lin Jiajin, D2010-2118 (WIPO Jan. 25, 2011); Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003). Respondent has failed to do so.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the domain name at issue, which is nearly identical to the SEACRETS mark, to direct Internet users to a commercial website and bar featuring goods and services that compete with or are related to Complainant’s services. Such use is clear evidence of bad faith registration and use. See, e.g., Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business), and Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶ 4(b)(iii)). Furthermore, it is clear that Respondent registered the domain name, which includes the SEACRETS mark, with actual knowledge of Complainant’s rights in light of the content of the website and the goods and services offered for sale thereon. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the Complainant’s mark when it registered the subject domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <seacretsbar.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2013
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