Gelco Information Network, Inc. v.
LaPorte Holdings, Inc.
Claim
Number: FA0502000418538
Complainant is Gelco Information Network, Inc. (“Complainant”),
1860 Michael Faraday Drive, Suite 150, Reston, VA 20190. Respondent is LaPorte Holdings, Inc. (“Respondent”), ATTN: expenselink.com, c/o
Nameking, Inc., 2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <expenselink.com>, registered with Nameking.com,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
10, 2005; the National Arbitration Forum received a hard copy of the Complaint February
14, 2005.
On
February 10, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <expenselink.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com,
Inc. verified that Respondent is bound by the Nameking.com, Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
February 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 9, 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@expenselink.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 14, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <expenselink.com>, is identical to Complainant’s
EXPENSELINK mark.
2. Respondent has no rights to or legitimate
interests in the <expenselink.com> domain name.
3. Respondent registered and used the <expenselink.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Gelco Information Network, Inc., provides expense management and reimbursement
services. Complainant registered the
EXPENSELINK mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,128,497 issued January 13, 1998).
Respondent
registered the <expenselink.com> domain name December 15,
2002. The disputed domain name resolves
to a website that features links to competing expense reimbursement services.
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 as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established by extrinsic proof in this proceeding that it has rights in the
EXPENSELINK mark through registration of the mark with the USPTO. See 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 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.”).
The domain name
that Respondent registered, <expenselink.com>, is identical to
Complainant’s EXPENSELINK mark. The
addition of the generic top-level domain “.com” is insufficient to distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has legal rights to the mark contained in its entirety
within the disputed domain name.
Complainant alleged that Respondent has no such rights or interests in
the mark or domain name containing the mark. Respondent failed to respond to
the Complaint. Thus, the Panel may
accept all reasonable assertions and allegations set forth by Complainant as
true and accurate. See 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 the Complaint to be deemed
true); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”).
Respondent did
not submit a response and has failed to rebut Complainant’s allegations. Thus, the Panel interprets Respondent’s
failure to respond as evidence that Respondent lacks rights and legitimate
interests in the <expenselink.com> domain name pursuant to Policy
¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <expenselink.com> domain name, which is identical to
Complainant’s EXPENSELINK mark, to operate a website that features links to
competing expense reimbursement services.
Such competing use is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with Complainant, was not a bona fide offering of goods
or services); see also N. Coast
Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no rights or legitimate interests in a domain name that diverted
Internet users to Respondent’s competing website through the use of
Complainant’s mark).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <expenselink.com>
domain name or is authorized to register domain names featuring Complainant’s
EXPENSELINK mark. Thus, the Panel finds
that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <expenselink.com> domain name, which is identical to
Complainant’s EXPENSELINK mark, to operate a website that features links to
competing expense reimbursement services.
The Panel finds that such competing use constitutes disruption and is
evidence that Respondent registered and used the disputed domain name in bad
faith 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).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Since the disputed
domain name is identical to Complainant’s mark, Internet users accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus, the
Panel finds that Respondent’s commercial use of the <expenselink.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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 Qwest Communications Int’l Inc. v. Ling Shun
Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered the <expenselink.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the EXPENSELINK mark due to Complainant’s registration of the mark with the
USPTO. Moreover, the Panel infers that
Respondent had actual knowledge of Complainant’s rights in the mark due to the
obvious connection between the content advertised on Respondent’s website and
Complainant’s business. Registration of
a domain name identical to a mark despite actual or constructive knowledge of
another’s rights in the mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). 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 Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”).
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 <expenselink.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 28, 2005
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