Norm Thompson Outfitters Inc. v. Web Development Group Ltd.
Claim Number: FA0602000645461
Complainant is Norm Thompson Outfitters Inc. (“Complainant”), represented by Parna A. Mehrbani, of Lane Powell PC, 601 SW Second Ave., Suite 2100, Portland, OR 97204. Respondent is Web Development Group Ltd. (“Respondent”), 166 North Front Street, #225, Belize City Belize.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <solutionscatalogue.net> and <solutionscatalogue.org> registered with Dstr Acquisition Vii, LLC and <solutionscatalogue.com>, registered with Tucows Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2006.
On February 17, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <solutionscatalogue.net > and <solutionscatalogue.org> domain names are registered with Dstr Acquisition Vii, Llc and that Respondent is the current registrant of the names. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 February 20, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <solutionscatalogue.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On February 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2006 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@solutionscatalogue.com, postmaster@solutionscatalogue.net, and postmaster@solutionscatalogue.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <solutionscatalogue.com>, <solutionscatalogue.net> and <solutionscatalogue.org> domain names are confusingly similar to Complainant’s SOLUTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <solutionscatalogue.com>, <solutionscatalogue.net> and <solutionscatalogue.org> domain names.
3. Respondent registered and used the <solutionscatalogue.com>, <solutionscatalogue.net > and <solutionscatalogue.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Norm Thompson Outfitters, Inc., owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SOLUTIONS mark. Complainant first registered the SOLUTIONS mark with the USPTO on June 23, 1987 (Reg. No. 1,444,563).
Complainant has been in the mail order catalog business since 1986, selling a variety of consumer goods throughout the United States. Beginning in 1999, Complainant began offering its catalog online through its website located at the <solutionscatalog.com> domain name.
Respondent registered the <solutionscatalogue.net>
domain name on July 19, 2005; the <solutionscatalogue.org> domain
name on August 4, 2005 and the <solutionscatalogue.com> domain
name on February 19, 2002. As late as
October 10, 2005, Respondent was using the disputed domain names to operate a
website featuring links to third-party websites, including the websites of
Complainant’s direct competitors.
Respondent is still using the <solutionscatalogue.com> domain name for such purposes, but the <solutionscatalogue.net> and <solutionscatalogue.org> domain names do not currently resolve to active websites.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 finds that Complainant’s registrations of its SOLUTIONS mark with the USPTO sufficiently establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also VICORP Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Complainant has also demonstrated that Respondent’s <solutionscatalogue.com>, <solutionscatalogue.net> and <solutionscatalogue.org> domain names are confusingly similar to Complainant’s SOLUTIONS mark. Respondent’s disputed domain names incorporate Complainant’s mark in its entirety, adding only the descriptive term “catalogue,” and the generic top-level domain “.com,” “.net,” or “.org.” The addition of the term “catalogue” to Complainant’s mark does not negate the confusing similarity between the disputed domain names and Complainant’s mark, especially because Complainant is engaged in the catalog business. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially prove that Respondent lacks rights and legitimate interests with respect to the disputed domain names. Nevertheless, once Complainant establishes a prima facie case, the burden of proof then shifts to Respondent to demonstrate that it does have rights or legitimate interests in the domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has met its burden and established a prima facie case. Therefore, the Panel will evaluate whether the evidence on record demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The evidence on record does not suggest that Respondent is commonly known by the <solutionscatalogue.com>, <solutionscatalogue.net> or <solutionscatalogue.org> domain name. Moreover, Respondent’s WHOIS information does not indicate that Respondent has ever been commonly known by any of the disputed domain names. Thus, the Panel finds that the evidence on record does not demonstrate that Respondent has rights or legitimate interests in the disputed domain names under 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Furthermore, the evidence demonstrates that Respondent is using the <solutionscatalogue.com> domain name to operate a website featuring links to third-party websites, including the websites of Complainant’s competitors and has used the <solutionscatalogue.org> and <solutionscatalogue.net> domain names to operate similar web directories in the past. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services. In the present case, Respondent is misleading consumers seeking Complainant’s catalog services and products to its own directory website for commercial gain. Such use by Respondent does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Group plc v. PARRY, FA 615243 (Nat. Arb. Forum Feb. 10, 2006) (finding that respondent’s use of complainant’s mark to operate a commercial website that “displays links to various third-party websites, including several that compete with complainant” does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <solutionscatalogue.com>,
<solutionscatalogue.org> and <solutionscatalogue.net>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because it has been
diverting Internet users to a website providing several links to third-party
businesses in direct competition with Complainant. Respondent’s website offers links to third-party retailers that
provide the same or similar products that Complainant offers at its
<solutionscatalog.com> domain name.
As a result, Respondent is taking advantage of the confusing similarity
between Respondent’s domain name and Complainant’s SOLUTIONS mark and
capitalizing on the goodwill associated with the mark for its own commercial
gain. Therefore, Respondent’s
registration of the domain name constitutes bad faith registration and use
under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
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 <solutionscatalogue.com>, <solutionscatalogue.net> and <solutionscatalogue.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 4, 2006
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