WeddingChannel.com Inc. v. Andrey
Vasiliev a/k/a NA and Free Domains Parking
Claim
Number: FA0305000156716
Complainant is
WeddingChannel.com Inc., Los Angeles, CA, USA (“Complainant”) represented
by Leslie Gutowski, of Finnegan Henderson Farabow Garrett &
Dunner LLP. Respondent is Andrey Vasiliev a/k/a NA and Free
Domains Parking, Moscow, RU (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <weddingchanel.com>, registered with Enom,
Inc.
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
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 2, 2003; the Forum received a hard copy of the Complaint
on May 5, 2003.
On
May 7, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <weddingchanel.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
May 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 28, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@weddingchanel.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 5, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <weddingchanel.com>
domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark.
2. Respondent does not have any rights or
legitimate interests in the <weddingchanel.com> domain name.
3. Respondent registered and used the <weddingchanel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
WeddingChannel.com Inc., holds numerous registrations for the WEDDING CHANNEL
mark (e.g., U.S. Reg. No. 2,508,302, registered on November 20, 2001 and
filed for registration on an Intent To Use basis on May 19, 1997). Complainant
operates under the WEDDING CHANNEL mark to offer advice, information, guidance
and resources for planning a wedding. At its <weddingchannel.com> domain
name, Complainant offers a network of gift registry services, information on
local vendors of wedding related products and services, and various segments
devoted to the sequential order of steps a couple should take in planning a
wedding. Currently, Complainant’s database contains over 1.3 million
registries, and in 2002 over $85 million in bridal registry gifts were purchased
through Complainant’s website.
Respondent,
Andrey Vasiliev a/k/a NA and Free Domains Parking, registered the <weddingchanel.com>
domain name on February 14, 2000, and is not licensed or authorized to use
Complainant’s WEDDING CHANNEL mark for any purpose. Previously, Respondent used
the disputed domain name to redirect Internet users to an online casino at the
<entercasino.net> domain name. By July 31, 2002, Respondent was using the
disputed domain name to frame a web directory website from the <bestoftheweb.com>
domain name. Respondent was a member of that domain name’s affiliate program at
that time.
Respondent
subsequently began redirecting Internet users to the <centerfind.com>
domain name, another web directory website. Currently, Respondent redirects
Internet users to the <ancestry.com> domain name, and also generates a
pop-up advertisement for an online casino.
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."
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.
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.
Complainant has
established rights in the WEDDING CHANNEL mark through registration of the mark
with the U.S. Patent and Trademark Office, as well as through widespread use of
the mark in commerce. See Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction).
Respondent’s <weddingchanel.com>
domain name is confusingly similar
to Complainant’s WEDDING CHANNEL mark. Respondent’s domain name would be an
exact duplicate of Complainant’s mark if not for the misspelling of the word
CHANNEL by omitting the letter “n.” This slight alteration of Complainant’s
mark is not enough to defeat a finding of confusing similarity under Policy ¶
4(a)(i). See State Farm
Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs.
Group, L.P. v. Seocho , FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark).
Accordingly, the
Panel finds that the <weddingchanel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark
under Policy ¶ 4(a)(i).
Complainant can
meet its initial burden under Policy ¶ 4(a)(ii) by demonstrating that the
provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. Successfully
making such a showing shifts Complainant’s burden onto Respondent, and
Respondent’s default in the present dispute results in Respondent’s inability
to meet that burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Respondent has made many uses of
the <weddingchanel.com>
domain name, all having one thing
in common. Respondent has always used the disputed domain name to redirect
Internet users to websites unrelated to the WEDDING CHANNEL mark, websites
where Respondent presumably receives a referral fee for each misdirected
Internet user. This diversionary and commercial use of Complainant’s mark is
not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks).
The value of Respondent’s domain name lies in the fact that it
duplicates a common misspelling of Complainant’s mark. This, along with the
fact that nothing in the disputed domain name’s WHOIS contact information
indicates otherwise, compels the Panel to find that Respondent is not “commonly
known by” the disputed domain name pursuant to Policy ¶ 4(c)(ii). This
provision is therefore inapplicable to Respondent. 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); see also MRA
Holding, LLC v. Costnet,
FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name
does not even correctly spell a cognizable phrase” in finding that Respondent
was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<weddingchanel.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered and used the <weddingchanel.com> domain name in bad faith.
Specifically, each iteration of Respondent’s use of the disputed domain name
has been commercial in one sense or another, be it through pop-up
advertisements for online casinos or via referral fees from web directories or
other commercial websites. Respondent registered a domain name which would
ensnare Internet users who misspelled Complainant’s WEDDING CHANNEL mark to
achieve these ends, creating an initial likelihood of confusion as to whether
Complainant endorsed or somehow sponsored Respondent’s website. This use
evidences registration and use of the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith where Respondent linked the
domain name <wwwnokia.com> to <bestoftheweb.com>).; see also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent
attracted users to advertisements).
The Panel thus
finds that Respondent registered and used the <weddingchanel.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <weddingchanel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 12, 2003
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