national arbitration forum

 

DECISION

 

Drummond, Woodsum & MacMahon, P.A. v. Domains to Develop

Claim Number:  FA0501000397023

 

PARTIES

Complainant is Drummond, Woodsum & MacMahon, P.A. (“Complainant”) represented by Daina J. Nathanson, 245 Commercial Street, PO Box 9781, Portland, ME 04104-5081.  Respondent is Domains to Develop (“Respondent”)(no address listed), artaxxa@yahoo.com.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <servingschool.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2005.

 

On January 7, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by email to the National Arbitration Forum that the domain name <servingschool.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. 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 January 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2005 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@servingschool.com by email.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 9, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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."  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <servingschool.com> domain name is confusingly similar to Complainant’s SERVINGSCHOOLS.COM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <servingschool.com> domain name.

 

3.      Respondent registered and used the <servingschool.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Drummond, Woodsum & MacMahon, P.A., is a law firm, which has specialized in representing school districts and educators for over twenty-five years.  In addition to its legal services, Complainant has written and published books, videos and other publications on a variety of topics of interest to both actual and prospective school leaders, administrators and employees, including their respective attorneys, agents and representatives.  Likewise, since 1990, Complainant has sponsored and conducted seminars and workshops on issues and matters of interest to this same population. 

 

Complainant owns a registration for the SERVINGSCHOOLS.COM mark with the United States Patent and Trademark Office (Reg. No. 2,593,537 filed February 3, 2000 and issued July 16, 2002).

 

Complainant has been using the SERVINGSCHOOLS.COM mark in commerce since 2000.  Since that time, Complainant has continually and extensively used its mark in connection with school-related goods and services.

 

Complainant’s main website is operated at <servingschools.com>. 

 

Respondent registered the <servingschool.com> domain name on June 24, 2004.  Respondent is using the domain name to direct Internet users to a directory of listings and links to other websites offering extremely varied goods and services related and unrelated to Complainant.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established with extrinsic proof in this proceeding that it has rights in the SERVINGSCHOOLS.COM mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last four and a half years.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for filing the Complaint in the first place).

 

The domain name registered by Respondent is confusingly similar to Complainant’s SERVINGSCHOOLS.COM mark because the domain name incorporates Complainant’s mark and deviates from it only by eliminating the plural “s.”  The mere deletion of the plural “s” does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights and legitimate interests in the domain name, as well as an arbitral grant to accept Complainant’s reasonable allegations as true.  See 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); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

The only evidence in the record that relates to the Panel’s determination of whether Respondent is commonly known by the disputed domain name is the WHOIS registration information.  However, the WHOIS information for the domain name lists the domain name registrant as Domains to Develop, not “servingschools.com.”  Therefore, the Panel finds that the evidence fails to indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) based on the foregoing.  See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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’s <servingschool.com> domain name is confusingly similar to Complainant’s mark and is used to host a search engine to link viewers to a variety of websites, including sites that offer the same types of goods and services that Complainant offers online.  Such use has consistently and frequently been found not to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to direct Internet users to a website that offers a search engine and links to education-related sites.  Complainant’s business is focused on education-related goods and services.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark to offer goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Respondent registered the <servingschool.com> domain name for commercial gain.  Respondent’s domain name diverts Internet users wishing to search under Complainant’s mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, 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 State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).   

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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

 

Accordingly, it is Ordered that the <servingschool.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

John J. Upchurch, Panelist

Dated:  February 23, 2005

 

 

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