DECISION

 

Dick Blick Holdings, Inc. v. Domain.Contact

Claim Number:  FA0306000162061

 

PARTIES

Complainant is Dick Blick Holdings, Inc., Highland Park, IL (“Complainant”) represented by Charles H. Young, of Husch & Eppenberger, LLC.  Respondent is Domain.Contact, Kuala Lumpur, Malaysia (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 9, 2003; the Forum received a hard copy of the Complaint on June 11, 2003.

 

On June 12, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain names <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> are registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the names.  Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 June 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 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@dickblickartmaterials.com,  postmaster@dickblik.com, postmaster@dikblick.com, postmaster@dickblic.com and postmaster@clickblick.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 July 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.).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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1. Respondent’s <dickblickartmaterials.com> is identical to Complainant’s DICK BLICK ART MATERIALS mark.

 

2. Respondent’s <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names are confusingly similar to Complainant’s DICK BLICK ART MATERIALS mark.

 

3. Respondent does not have any rights or legitimate interests in the <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names.

 

4. Respondent registered and used the <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds United States Patent and Registration No. 2,129,168, registered on the Principal Registry on January 13, 1998, for the DICK BLICK ART MATERIALS mark.  Complainant first used the DICK BLICK ART MATERIALS mark in interstate commerce in January, 1985.

 

Complainant uses the DICK BLICK ART MATERIALS mark for retail services and mail order catalog services featuring artists’ materials and supplies.

 

Respondent registered the <dickblickartmaterials.com> domain name on March 29, 2003.  Respondent also registered the <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names on November 13, 2002.

 

There is no active website associated with any of the disputed domain names registered by Respondent.  Specifically, Respondent has not used the disputed domain names or demonstrated preparations to use the them in connection with any bona fide offering of goods or services. 

 

DISCUSSION

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.

 

The Panel recognizes that Complainant erred in Section 4 of its Complaint when it stated that the <dickblickart.com> domain name was in dispute rather than the <dickblickartmaterials.com> domain name.

 

Identical and/or Confusingly Similar

 

Complainant, Dick Blick Holdings, Inc., has established rights in the DICK BLICK ART MATERIALS mark through registration on the Principal Register of the United States Patent and Trademark Office.  In addition, Complainant has established common law rights in the DICK BLICK ART MATERIALS mark based on legitimate continuous use of the mark in commerce since 1985.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

Respondent’s <dickblickartmaterials.com> domain name is identical to Complainant’s DICK BLICK ART MATERIALS mark.  Respondent uses Complainant’s entire mark in the disputed domain name.  The only difference is that there are no spaces between the words and Complainant adds the top-level domain “com” to Complainant’s mark.  Such minor differences are not sufficient to create a domain name that differs from Complainant’s mark under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark). 

 

Respondent’s <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names are merely a slight misspelling of Complainant’s mark.  In addition, Respondent simply deletes the descriptive words “art materials” in each of the disputed domain names.  Furthermore, all of the terms in the disputed domain names are listed in the exact order as in the DICK BLICK ART MATERIALS mark.  Thus, the Panel finds that <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See 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); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).  

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

 

Respondent has not submitted a Response in this proceeding.  Thus, the Panel accepts as true all reasonable allegations contained in the Complaint.  Furthermore, since Respondent has failed to submit a Response, Respondent has not shown any circumstances that could substantiate its rights or legimimate interests in the disputed domain names.  See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Respondent is not commonly known by the <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names.  None of the WHOIS contact information for the disputed domain names indicates that Respondent is commonly known by any of the disputed domain names.  Since there is no evidence before the Panel to the contrary, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy           ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Respondent has made no use of the <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names.  Thus, the Panel reasonably infers that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  Under these circumstances, Policy ¶¶ 4(c)(i) and (iii) do not apply to Respondent.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).    

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Respondent has not used any of the disputed domain names since they were registered.  The Panel finds that such passive holding equates to bad faith use and registration under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established.

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dickblickartmaterials.com>, <dickblik.com>, <dikblick.com>, <dickblic.com> and <clickblick.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated: July 28, 2003

 

 

 

 

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