National Arbitration Forum

 

DECISION

 

ADP of North America, Inc. v DMS Inc.

Claim Number: FA0507000506852

 

PARTIES

Complainant is ADP of North America, Inc. (“Complainant”), represented by Susan E. Hollander, of Manatt, Phelps & Phillips LLP, 1001 Page Mill Road, Building 2, Palo Alto, CA 94304.  Respondent is DMS Inc. (“Respondent”), represented by Jeff Hammer, PO Box 2873, Pocatello, ID 83206.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info>, registered with Network Solutions, Inc.

 

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.

 

Timothy D. O’Leary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 5, 2005.

 

On July 1, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 July 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 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@dealersweet.com, postmaster@dealersweet.net, postmaster@dealersweet.org, and postmaster@dealersweet.info by e-mail.

 

A timely Response was received and determined to be complete on July 28, 2005.

 

A timely Additional Submission was received from Complainant and determined to be complete on August 1, 2005.

 

A timely Respondent’s Additional Submission was received.

 

I have studied all submissions submitted and considered them in my ruling.

 

On August 5, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

 

I. COMPLAINANT’S CONTENTIONS

 

            A.  Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant avers that it has established common law rights in the DEALERSUITE mark.  Complainant asserts that under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark.  Complainant has filed an application to register the DEALERSUITE mark and asserts that it has common law rights in the mark, because the mark has acquired secondary meaning as a source indicator for Complainant’s computerized payroll, transaction processing, data communications and information-based business solutions business.

 

Complainant argues that the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names are confusingly similar to Complainant’s DEALERSUITE mark because the only differences between the mark and the domain names are the replacement of the term “suite” with the phonetically identical “sweet,” and the addition of different generic top-level domains to the mark.

 

            B. Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant points out that the Panel should be aware that once Complainant makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist).

 

Complainant argues that Respondent is not commonly known by the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, or <dealersweet.info> domain name, and that Respondent has not been licensed or otherwise authorized by Complainant to use the DEALERSUITE mark. 

 

Complainant asserts that Respondent is using the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names to redirect Internet users interested in Complainant’s DEALERSUITE products and services to Respondent’s website offering products and services in direct competition with Complainant’s computerized payroll, transaction processing, data communications and information-based business solutions business. 

 

                        C. Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant contends that Respondent, a direct competitor in the dealer management services industry, registered the confusingly similar <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names in order to promote products and services that compete with Complainant’s business. 

 

Complainant alleges that the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names are confusingly similar to Complainant’s DEALERSUITE mark.  Moreover, Complainant contends that Respondent commercially benefits when Internet users searching under Complainant’s marks are diverted to Respondent’s website. 

 

II. RESPONDENT S CONTENTIONS

 

            A.  Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

Respondent asserts that Complainant has failed to prove common law rights in the DEALERSUITE mark.  Respondent further argues that the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names are not confusingly similar to Complainant’s DEALERSUITE mark because the domain names replace the word “suite” with the word “sweet.”

 

            B. Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Respondent asserts that it has rights or legitimate interests in the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names because it is using the domain names to make a bona fide offering of goods or services on its website by providing a news and information source to automobile dealers and related industries.

 

                        C. Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Respondent argues that it did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  Respondent further argues that it registered the domain names in connection with a fair business interest and no likelihood of confusion was created.

 

FINDINGS

 

A.  Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

I find that Complainant has demonstrated secondary meaning associated with the mark, and therefore, Complainant’s common law rights are sufficient for satisfying Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”).

 

I find that the minor alterations to Complainant’s mark are insufficient to negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the complainant’s YAHOO mark); see also Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

B. Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

I determine that Respondent has not established rights or legitimate interests in the <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names pursuant to Policy ¶ 4(c)(ii).  See 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”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

I believe that Respondent’s use of domain names that are confusingly similar to Complainant’s DEALERSUITE mark to redirect Internet users interested in Complainant’s products and services to Respondent’s website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

 

            C. Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

I conclude that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from the respondent travel agency to the complainants, who operated Sandals hotels and resorts).

 

I further conclude that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its mark.  Thus, I find that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used an infringing domain name to attract users to a website sponsored by the respondent).

 

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 <dealersweet.com>, <dealersweet.net>, <dealersweet.org>, and <dealersweet.info> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Timothy D. O’Leary, Panelist
Dated: August 18, 2005

 

 

National Arbitration Forum