Trident Growth Fund, LP v. Nevis Domains LLC.
Claim Number: FA0608000772911
Complainant is Trident Growth Fund LP (“Complainant”), represented by Sherri L. Eastley, of Wong, Cabello, Lutsch, Rutherford & Brucculeri L.L.P., PO Box 685108, Austin, TX 78768-5108. Respondent is Nevis Domains LLC. (“Respondent”), 222-3 Main Street, Charlestown, II 0000 KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <curtismathes.com>, registered with Moniker Online Services, Inc., Nameview, 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 electronically on August 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2006.
On August 18, 2006, Moniker Online Services, Inc., Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <curtismathes.com> domain name is registered with Moniker Online Services, Inc., Nameview, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc., Nameview, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc., Nameview, 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 August 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 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@curtismathes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <curtismathes.com> domain name is identical to Complainant’s CURTIS MATHES mark.
2. Respondent does not have any rights or legitimate interests in the <curtismathes.com> domain name.
3. Respondent registered and used the <curtismathes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trident Growth Fund, LP, has offered quality consumer electronics and related services since 1959. The CURTIS MATHES mark is based in the name of an individual and was first used by that individual in connection with consumer electronics products. The mark is now owned by Complainant and continues to be used in connection with a variety of consumer electronics products. Complainant originally registered the CURTIS MATHES mark with the United States Patent and Trademark Office on January 9, 1979 (Reg. No. 1,110,836), and registered the mark again on April 2, 1985 (Reg. No. 1,328,184). Those two registrations expired on January 9, 1999 and October 2, 2005 respectively. Complainant currently holds a third registration with the USPTO for the CURTIS MATHES mark (Reg. No. 2,491,241 issued September 18, 2001).
Respondent registered the <curtismathes.com> domain name on January 8, 1997. Respondent is using the disputed domain name to operate a website composed of links to other third-party websites. Many of the websites are commercial websites offering goods and services in competition with Complainant, for example “Televisions,” “Electronics Parts” and “Home Theater.” Respondent has been involved in numerous previous UDRP disputes and has lost nine of those disputes in the last five months.
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.
Complainant has continuously held registrations for the
CURTIS MATHES mark with the USPTO since 1979.
Thus, the Panel finds that Complainant has established rights in the
CURTIS MATHES mark pursuant to Policy ¶ 4(a)(i). 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 [or] have acquired secondary
meaning.”); see also 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.”).
Respondent’s <curtismathes.com> domain name is identical to Complainant’s mark. The disputed domain name duplicates Complainant’s mark in its entirety, merely removing the space between the two words and adding the top-level domain “.com.” The deletion of a space and the addition of the top-level domain “.com” does not overcome the confusing similarity between the disputed domain name and Complainant’s mark because the format requirements of domain names do not allow for spaces between words and require the addition of a top-level domain. Thus, the Panel finds that the disputed domain name is identical to Complainant’s mark. 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.”)
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent has the opportunity to provide evidence or arguments to the Panel demonstrating its rights or legitimate interest by filing a Response. Respondent’s failure to avail itself of the opportunity to respond suggests that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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.”). Thus, the Panel will examine the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website. Respondent’s website features links to third-party website, some of which appear to be commercial websites offering consumer electronics goods and services in competition with Complainant. Presumably, Respondent is receiving pay-per-click referral fees when Internet users click on the links that populate Respondent’s website. The Panel finds that such use does not demonstrate legitimate rights or interests in the disputed domain name as it is neither 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 Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding 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); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, there is no available evidence that Respondent
is commonly known by the <curtismathes.com> domain name. Respondent’s WHOIS registration information
identifies Respondent as “Nevis Domains LLC.”
Furthermore, Complainant asserts that Respondent is not affiliated with
Complainant and does not have permission from Complainant to reflect
Complainant’s mark in a domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name and thus, lacks rights or legitimate interests in the disputed
domain name as contemplated by 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 interest 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
This UDRP dispute is the most recent in a long line of
disputes involving Respondent. Indeed,
in the last five months alone, Respondent has lost nine disputes based on
Respondent’s bad faith registration and use of domain names including others’
marks. See, e.g. Disney Enters., Inc
v. Nevis Domains, FA 7398791 (Nat. Arb. Forum Aug. 11, 2006); Woodforest
Nat’l Bank v. Nevis Domains, FA 728791 (Nat. Arb. Forum July 27, 2006; MBI,
Inc. v. Moniker Privacy Services/Nevis Domains LLC, D2006-0550 (WIPO July
2, 2006). Respondent has exhibited a
pattern of registering domain names including the marks in which others have
rights. The Panel finds that Respondent’s
behavior constitutes bad faith Registration and use pursuant to Policy ¶
4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent
registered many domain names unrelated to its business which infringe on famous
marks and websites); see also Sony Kabushiki
Kaisha v. Anderson, FA 198809 (Nat. Arb.
Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad
faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered
domain names incorporating well-known third party trademarks).
Respondent’s <curtismathes.com> domain name is identical to Complainant’s CURTIS MATHES mark. Internet users seeking Complainant’s consumer electronics goods or services online would logically type Complainant’s mark into a web browser or Internet search engine and in doing so would find themselves redirected to Respondent’s website. Because Respondent’s domain name is identical to Complainant’s mark, and because Respondent’s website includes links for consumer electronic products Internet users may mistakenly believe that Respondent is affiliated with Complainant. Respondent is capitalizing from this confusion, presumably collecting pay-per-click referral fees from the links that make up Respondent’s website. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Not only is Respondent benefiting from the <curtismathes.com>,
Respondent is also harming Complainant’s business. When Internet users seeking Complainant’s consumer electronic
products under the CURTIS MATHES mark are redirected to Respondent’s website,
they may follow the links to competing third-party websites and do business
with those websites instead of with Complainant. This takes business away from Complainant and disrupts
Complainant’s business. The Panel finds
that such use is evidence of bad faith registration and use pursuant to 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
competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <curtismathes.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 2, 2006
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