Emergency24, Inc. v. (This Domain is For
Sale) Joshuathan Investments, Inc.
Claim
Number: FA0308000190612
Complainant is Emergency24, Inc., Chicago, IL
(“Complainant”) represented by Jared
Palmer. Respondent is (This Domain is For Sale) Joshuathan
Investments, Inc., Belize City, Belize (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <77search.com>, <7searchs.com> and
<7searcher.com>, registered with Bulkregister.com, Inc.
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 (the "Forum")
electronically on August 26, 2003; the Forum received a hard copy of the
Complaint on August 29, 2003.
On
August 27, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that
the domain names <77search.com>, <7searchs.com> and
<7searcher.com> are registered with Bulkregister.com, Inc. and that
Respondent is the current registrant of the names. Bulkregister.com, Inc. has
verified that Respondent is bound by the Bulkregister.com, 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
September 2, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 22, 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@77search.com,
postmaster@7searchs.com and postmaster@7searcher.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
October 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <77search.com>,
<7searchs.com> and <7searcher.com> domain names are
confusingly similar to Complainant’s 7SEARCH.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <77search.com>, <7searchs.com> and
<7searcher.com> domain names.
3. Respondent registered and used the <77search.com>,
<7searchs.com> and <7searcher.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
On October 28, 1999,
Complainant filed an application with the U.S. Patent and Trademark Office to
register the 7SEARCH.COM mark (Reg. No. 2,392,459 – registered July 11, 2000 on
the Supplemental Register). Complainant
has used the mark in commerce since January 1, 1999. Complainant operates a website that provides search engine and
Internet search-related functions for thousands of advertisers and millions of
Internet users.
Respondent
registered the <77search.com>, <7searchs.com> and
<7searcher.com> domain names on November 28, 2000. Respondent uses the disputed domain names as
search engines. Each of the connected
websites attempts to sell the domain names through advertisements that state,
“This Domain for Sale. Click here for
Details.” Respondent has registered
each of the disputed domain names under the name “(This Domain is for Sale)
Joshuathan Investments, Inc.” and the WHOIS contact information states that
each of the domain names is for sale at a price of $250.
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 7SEARCH.COM mark through registration of the
mark with the U.S. Patent and Trademark Office and through the mark’s use in
commerce since January 1999. See
Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (holding
that, although Complainant's registration on the Supplemental Register denotes
a descriptive mark without secondary meaning, Complainant nevertheless had
standing to initiate a UDRP claim because Policy ¶ 4(a)(i) requires only that
the Complainant have "rights" in the disputed domain name, strong or
weak though they may be); see also Gruner + Jahr Printing &
Publ’g Co. v. Internet Billions Domains, Inc., FA 114663 (Nat. Arb. Forum
Sept. 3, 2002) (holding that Complainant’s five USPTO registrations
incorporating its HOMESTYLE mark on the Supplemental Register and Complainant’s
use of the mark as part of the title of a magazine in the U.S. since as early
as January 8, 1992—despite the magazine repeatedly changing titles—was sufficient
to grant standing under the UDRP); see also 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 <77search.com>,
<7searchs.com> and <7searcher.com> domain names are
confusingly similar to Complainant’s mark because the disputed domain names
fully incorporate the 7SEARCH.COM mark.
The first domain name merely adds the number “7” to Complainant’s mark
and the remaining two domain names add the letters “s” or “er” to the
mark. Respondent’s addition of the
number and letters to Complainant’s mark does not sufficiently distinguish the
disputed domain names from Complainant’s mark, and therefore the domain names
are confusingly similar to the 7SEARCH.COM mark. See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that adding the suffixes "502" and "520" to the ICQ
trademark does little to reduce the potential for confusion); see also Dow Jones & Co., v. Powerclick, Inc.,
D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of
errors or changes, such as the addition of a fourth “w” or the omission of
periods or other such generic typos do not change respondent’s infringement on
a core trademark held by Complainant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to respond to the allegations of the Complaint, the Panel
may presume that Respondent lacks rights or legitimate interests in the
disputed domain names. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); 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).
Furthermore, the
WHOIS information for the <77search.com>, <7searchs.com> and
<7searcher.com> domain names fails to establish that Respondent is
commonly known by any of the disputed domain names. The record fails to establish that Respondent was authorized or
licensed to register or use domain names that incorporate Complainant’s
mark. Therefore, the Panel concludes
that Respondent lacks rights or legitimate interests in the domain names pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
In addition,
Respondent has stated within the WHOIS information for each of the disputed
domain names that they are each for sale at a price of $250. Respondent also attempts to sell the domain
names by posting advertisements on the websites that the domain names resolve
to by stating, “This Domain for Sale.
Click here for Details.”
Respondent’s attempts to sell the confusingly similar domain names are
evidence that Respondent lacks rights or legitimate interests in the domain
names. The Panel concludes that
Respondent is not using the domain names to make a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor for a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb.
Forum May 27, 2003) (holding that under the circumstances, Respondent’s
apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where Respondent registered
the domain name with the intention of selling its rights).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It can
be inferred that Respondent had actual or constructive knowledge of
Complainant’s mark because the mark is registered with the U.S. Patent and
Trademark Office and the mark has been used in commerce since 1999. Due to the relatively minimal costs involved
in registering a domain name, the Panel presumes that the $250 price advertised
by Respondent is in excess of Respondent’s out-of-pocket costs. The Panel concludes that Respondent’s
listing in the WHOIS information that the domain names were for sale and
Respondent’s additional attempts to sell the domain names for more than out-of-pocket
costs is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Parfums Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS
registration information contained the words, “This domain name is for sale”); see
also Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent
registered the domain name for the purpose of selling it, as revealed by the
name Respondent chose for the registrant, “If you want this domain name, please
contact me”); see also World
Wrestling Fed’n Entm’t., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out-of-pocket costs); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <77search.com>, <7searchs.com> and
<7searcher.com> domain names be TRANSFERRED from Respondent to
Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 20, 2003
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