national arbitration forum

 

DECISION

 

REO Speedwagon, Inc. v. Domain Administrator

Claim Number: FA0702000910799

 

PARTIES

Complainant is REO Speedwagon, Inc. (“Complainant”), represented by Tiffany A. Dunn, of Loeb & Loeb LLP, 1906 Acklen Avenue, Nashville, TN 37212.  Respondent is Domain Administrator (“Respondent”), PO Box 533, West Bay KY.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <reospeedwagon.com>, registered with Rebel.com.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2007.

 

On February 15, 2007, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <reospeedwagon.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name.  Rebel.com has verified that Respondent is bound by the Rebel.com 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 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@reospeedwagon.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <reospeedwagon.com> domain name is identical to Complainant’s REO SPEEDWAGON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <reospeedwagon.com> domain name.

 

3.      Respondent registered and used the <reospeedwagon.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, REO Speedwagon, Inc., is a corporation which owns all interests in the musical group known as “REO Speedwagon.”  REO Speedwagon, through chart-topping hits like “Keep On Loving You” and “Can’t Fight This Feeling,” etched its place in the iconic pantheon of American rock-and-roll music through the 1970s to the present.  In connection with its business interests, Complainant registered the REO SPEEDWAGON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,431,535 issued March 3, 1987).

 

Respondent registered the <reospeedwagon.com> domain name on May 5, 2001.  The disputed domain name resolves to a commercial website featuring links to websites offering products that compete with Complainant’s business.

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the REO SPEEDWAGON mark through registration of the mark with the USPTO.  The Panel finds that Complainant’s timely registration and subsequent use for over twenty years sufficiently establishes rights in the mark pursuant to 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). 

 

Complainant alleges that Respondent’s <reospeedwagon.com> domain name is identical to its REO SPEEDWAGON mark.  The disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a gTLD to an otherwise identical mark does not satisfactorily establish uniqueness in the mark pursuant to Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also 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.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

In situations where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating it has rights or legitimate interests.  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 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).”).

 

The disputed domain name resolves to a commercial website that features links to other third-party websites, some of which compete directly with Complainant’s business.  Respondent presumably receives referral fees for each misdirected Internet user that passes through its website.  The Panel finds that Respondent’s use 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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).

 

Complainant contends that nothing in WHOIS record for the disputed domain name indicates that Respondent is commonly known by the disputed domain name.  Complainant further contends that Respondent is not authorized by Complainant to register or use domain names that contain Complainant’s REO SPEEDWAGON mark.  Lacking evidence that would lead to a contrary conclusion, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to redirect unsuspecting Internet users to websites that directly compete with Complainant’s business.  The disputed domain name is likely to cause confusion among Internet users as to the source and affiliation of the resultant competing websites.  The Panel finds that Respondent’s use constitutes a disruption of Complainant’s business, thereby evincing registration and use in bad faith in accordance with Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Complainant contends that Respondent is receiving income each time an Internet user clicks on a link displayed at its website.  The Panel finds that Respondent’s apparent attraction of Internet users for commercial gain evinces registration and bad faith 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <reospeedwagon.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  March 23, 2007

 

 

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