Stephen Dubinsky dba K9 Clubhouse v. Ashley Marchel
Claim Number: FA1306001506028
Complainant is Stephen Dubinsky dba K9 Clubhouse (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Ashley Marchel (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <k9clubhouse.net> registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 21, 2013.
On Jun 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <k9clubhouse.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@k9clubhouse.net. Also on June 24, 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 July 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <k9clubhouse.net> domain name is confusingly similar to Complainant’s K9 CLUBHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <k9clubhouse.net> domain name.
3. Respondent registered and used the <k9clubhouse.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the K9 CLUBHOUSE mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,110,223, registered June 27, 2006). Complainant uses the mark in connection with a dog daycare and boarding service, which it promotes through its <k9clubhouse.com> domain name.
Respondent registered the <k9clubhouse.net> domain name on February 10, 2008, and uses it to offer services in competition with Complainant’s services.
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 Panel finds that Complainant’s USPTO registration establishes its rights in the K9 CLUBHOUSE mark under 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, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that the disputed domain name is confusingly similar to the K9 CLUBHOUSE mark as the domain name consists of Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.net.” The disputed domain also eliminates the space between the two words of the K9 CLUBHOUSE mark. Previous panels have found that the inclusion of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i), and the elimination of the space between the words of a complainant’s mark, do not sufficiently distinguish the disputed domain name from the mark incorporated in the domain name. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain name is identical to Complainants mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent has no rights or legitimate interests with respect to the domain name, and that Complainant is not affiliated with Respondent. Although the WHOIS information identifies the domain registrant’s contact as “ASHLEY MARCHEL / k9clubhouse@yahoo.com,” there is no substantive evidence in the record to suggest Respondent is known by the disputed domain name. In Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004), the panel explained, “In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.” The Panel similarly finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is using the domain name to offer dog care services in competition with those provided by Complainant and provides a screenshot demonstrating that. Previous panels have found that using a confusingly similar domain name to offer competing services does not constitute a bona fide offering of goods or services, or a noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent’s use of the disputed domain to offer services that compete with Complainant does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the confusingly similar domain name to offer services in competition with Complainant’s services, which disrupts Complainant’s business. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii).
Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating confusion as to Complainant’s association with the disputed domain name. Complainant provides evidence from Yahoo! And Google searches on “K9 CLUBHOUSE,” arguing that the results show confusion among Internet users, which allows Respondent to capitalize on the goodwill associated with Complainant’s mark. Previous panels have held that a respondent’s use of a confusingly similar domain name to attract users to respondent’s own website offering services that compete with Complainant is evidence of bad faith use and registration because Internet users may mistake the respondent’s business as an affiliate or business partner of the complainant/mark-holder. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). The Panel finds that Respondent’s use of the <k9clubhouse.net> domain name shows bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered the domain name in bad faith as Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark because the resolving page provides the same dog care services as Complainant. The Panel finds, however, that there is no conclusive evidence of Respondent’s actual knowledge of Complainant’s mark and declines to find bad faith on that ground.
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 <k9clubhouse.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 30, 2013
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