Sico Incorporated v. Wan-Fu China, Ltd.
Claim Number: FA0701000886447
Complainant is Sico Incorporated (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett,
P.A., 500 IDS Center,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sicosystems.com>, registered with Belgiumdomains, LLC.
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
On
On January 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2007, 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@sicosystems.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2007, 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 <sicosystems.com> domain name is confusingly similar to Complainant’s SICO mark.
2. Respondent does not have any rights or legitimate interests in the <sicosystems.com> domain name.
3. Respondent registered and used the <sicosystems.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sico Incorporated, manufactures and markets
table structures and upwardly folding beds under the SICO mark. Complainant has continuously used the mark
since 1952 and is well known in the mobile folding products industry in the
Complainant has registered the SICO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 908,400 issued February 23, 1971; Reg. No. 748,458 issued April 23, 1963).
Respondent’s <sicosystems.com>
domain name, which it registered on
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.
Through registration of the SICO mark with the USPTO,
Complainant has established rights in the mark pursuant to Policy ¶
4(a)(i). See Miller Brewing
Because the <sicosystems.com>
domain name merely appends the term “systems” to Complainant’s federally
registered SICO mark, Respondent has not sufficiently distinguished the
disputed domain name from the mark.
Consequently, the Panel finds the disputed domain name to be confusingly
similar to the mark pursuant to Policy ¶ 4(a)(i). See Amer. Express Co. v.
MustNeed.com, FA 257901 (Nat. Arb.
Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant under Policy ¶ 4(c), the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <sicosystems.com> domain name. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Because the WHOIS information lists the domain name
registrant as “Wan-Fu China, Ltd.,” and there is no other evidence in the
record suggesting that Respondent is commonly known by the disputed domain
name, the Panel finds that Respondent has not established rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v.
TFA Assocs., FA 95169 (Nat. Arb.
Forum
Respondent’s <sicosystems.com>
domain name, which is confusingly similar to Complainant’s SICO mark, redirects
Internet users to a search engine web page displaying links to Complainant’s
competitors and to third-party content unrelated to Complainant. The Panel presumes that Respondent profits
from click-through fees it earns by redirecting Internet users to third-party
competing commercial websites. The Panel
does not find such use to constitute 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
24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <sicosystems.com> domain name to redirect Internet users to websites competing with Complainant. As a result, the Panel finds that Respondent has registered and is using the disputed domain name in order to disrupt Complainant’s business under the SICO mark, which constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business).
Furthermore, the
Panel also finds that Respondent’s diversionary use of the <sicosystems.com>
domain name for commercial gain violates Policy ¶ 4(b)(iv), for by linking the
contested domain name to a website displaying links to Complainant’s
competitors, Respondent is taking advantage of the confusing similarity between
the disputed domain name and Complainant’s SICO mark in order to profit from
the goodwill associated with the mark. See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sicosystems.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 23, 2007
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