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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