Sea World, Incorporated v.
Holix Inc.
Claim Number: FA0702000924533
PARTIES
Complainant is Sea World, Incorporated (“Complainant”), represented by Andrea
K. Cannon, of Anheuser-Busch Companies, Inc., One
Busch Place, St. Louis, MO 63118.
Respondent is Holix Inc. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shamu.tv>, registered with Wild West
Domains, 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.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 23, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 26, 2007.
On February 27, 2007, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <shamu.tv> domain name is registered
with Wild West Domains, Inc. and that the
Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 5, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 26, 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@shamu.tv by e-mail.
A timely Response was received and determined to be complete on March 26, 2007.
ADDITIONAL SUBMISSIONS
Complainant timely filed an Additional Submission in this matter, as it
was received on March 30, 2007.
Respondent timely filed an Additional Submission to their ICANN case
and it was received on April 4, 2007.
On April 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
A. Complainant
makes the following assertions:
1. That
Complainant owns several trademark registrations in the SHAMU mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,261,685 issued
December 20, 1983; Reg. No. 1,798,255 issued October 12, 1993; Reg. No.
1,911,501 issued August 15, 1995).
2. That
Respondent’s <shamu.tv> domain name is confusingly similar to
Complainant’s SHAMU trademarks.
3. That
Respondent’s use of the <shamu.tv> domain name for the purpose of
operating a website containing links to various competing commercial websites
fails to establish Respondent’s rights and legitimate interests.
4. That
Respondent is not known by the disputed domain name and that Respondent cannot
rely on a nickname of an employee as its means of establishing rights and
legitimate interests in the <shamu.tv> domain name.
5. That Respondent’s registration of and manner of use of the <shamu.tv> domain name is evidence of bad faith.
B. Respondent
makes the following assertions:
1. That
Respondent registered the <shamu.tv> domain name on September 11,
2005.
2. That
the term “shamu” is a generic term in the Akkadian, Japanese, and Aramaic
languages.
3. That
Respondent has been commonly known by the nickname “Shamu” since as early as
1978.
4. That
the <shamu.tv> domain name is for noncommercial use and is in no
way intended to divert customers from Complainant’s own business.
5. That Respondent’s rights and legitimate interests in the <shamu.tv> domain name preclude a finding of bad faith registration and use.
C. Additional
Submissions
Complainant timely filed an Additional Submission in this matter, as it
was received on March 30, 2007. Respondent timely filed an Additional
Submission to their ICANN case and it was received on April 4, 2007. Said Additional Submissions were carefully
reviewed by the Panel, however, did not influence my decision.
Respondent argues that Holix, Inc. is not commonly known as SHAMU or <shamu.tv>. The
sole owner of Holix, Inc. is Respondent.
Mr. Khan is the owner of Holix, Inc.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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.
FINDINGS
ISSUE:
In reviewing the Response, it appears that the main issues are under ICANN
Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or
legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
Complainant asserts rights in the
SHAMU mark through registration with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,261,685 issued December 20, 1983; Reg. No.
1,798,255 issued October 12, 1993; Reg. No. 1,911,501 issued August 15, 1995;
Reg. No. 2,046,167 issued March 18, 1997).
The Panel finds that Complainant’s numerous trademark registrations
sufficiently establish its rights in the SHAMU mark for purposes of Policy ¶
4(a)(i). See
Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Jan. 9, 2007) (finding
rights in the METLIFE mark as a result of its registration with the
Complainant contends that Respondent’s <shamu.tv> domain name is identical to Complainant’s well-established mark. Respondent’s domain name contains Complainant’s SHAMU mark in its entirety and adds the country-code top-level domain (ccTLD) “.tv.” The Panel finds that the mere addition of a ccTLD is insufficient to properly distinguish Respondent’s disputed domain name from Complainant’s mark under policy ¶ 4(a)(i). See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to the complainant’s CLAIROL marks).
The Panel is aware that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no 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 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent has never been commonly known by the disputed domain name, or any variation thereof, nor licensed to register domain names featuring Complainant’s SHAMU mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
In its Response, Respondent contends that it’s employee, Shahram Shahnavaz-Khan, is known by the nickname “Shamu.” Complainant, however, asserts that Respondent cannot claim rights and legitimate interests in the nicknames of its employees. The Panel finds that Respondent has failed to establish rights and legitimate interests in the <shamu.tv> domain name based on a nickname of an employee. See Fed. Home Loan Mortgage Corp. v. Arshad, FA 116767 (Nat. Arb. Forum Sept. 19, 2002) (finding that the “law of domain name dispute cases uniformly holds that a Respondent cannot rely on third party ownership of name or mark for registration and use of a domain name”); see also Ashley Furniture Indus., Inc. v. Ename Holdings, FA 110848 (Nat. Arb. Forum July 16, 2002) (finding that the respondent had no legitimate interest in the domain name, <ashley.biz>, because the respondent is not commonly known as “Ashley” or “Ashley.biz” and the fact that its business associate is Ashley Coffield does not give the respondent rights in the domain name).
Furthermore, Complainant contends that Respondent’s <shamu.tv> domain name connects Internet users to the website <gosniff.com>, which contains a collection of links to various travel-related websites. The Panel concludes from Respondent’s use that it is collecting referral fees for each misdirected Internet user connected to the various websites and that such 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 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant contends that Respondent is using the <shamu.tv> domain name for the purpose of generating referral fees for Internet users misdirected to Complainant’s competitor’s websites. The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and 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 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).
Furthermore, Complainant contends that Respondent’s manner of use of the <shamu.tv> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. The Panel finds that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Complainant contends that
Respondent had actual or constructive knowledge of Complainant’s rights in the
SHAMU mark. The Panel finds that
registration of a domain name containing Complainant’s well-known mark with
knowledge of Complainant’s rights is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also
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 <shamu.tv> domain name be TRANSFERRED
from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: April 19, 2007
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