EarthSky Communications, Inc. v. eCommerce Advertising c/o Domain Administrator
Claim Number: FA0703000944811
Complainant is EarthSky Communications, Inc. (“Complainant”), represented by Jonathan
Lass, of Clark, Thomas & Winters, PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <earthandsky.org>, registered with eNom, 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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@earthandsky.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <earthandsky.org> domain name is confusingly similar to Complainant’s EARTH & SKY mark.
2. Respondent does not have any rights or legitimate interests in the <earthandsky.org> domain name.
3. Respondent registered and used the <earthandsky.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, EarthSky
Communications, Inc., has used the EARTH & SKY mark for the production and
delivery of educational, scientific radio programs since September of
1991. Complainant holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the EARTH & SKY mark (i.e. Reg. No. 3,090,269 issued May 9, 2006) and
previously held another trademark registration for the EARTH & SKY mark
until it was cancelled due to an administrative error (i.e. Reg. No. 1,854,924 issued September 20, 1994). Complainant
has registered the <earthsky.org> domain name which it uses in connection
with the delivery of its series of educational radio programs. Complainant’s programs are heard by three
million people each week in the
Respondent registered the <earthandsky.org>
domain name 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.
It is not necessary for Complainant to hold a registered
trademark to establish rights in the EARTH & SKY mark. Common law rights in a mark are sufficient to
satisfy Policy ¶ 4(a)(i). See
Complainant has established common law rights in its EARTH & SKY mark through extensive and continual use since September of 1991. While Complainant has since registered the mark with the USPTO and did hold a prior registration of the mark which was cancelled, ultimately Complainant is commonly known by the EARTH & SKY mark and has been since 1991. The Panel finds that Complainant has created substantial consumer recognition in the EARTH & SKY mark sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Respondent’s <earthandsky.org> domain name is confusingly similar to Complainant’s EARTH & SKY mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely replaces the ampersand in Complainant’s mark with the equivalent word “and.” The Panel finds that the mere substitution of the ampersand with the word “and” does not sufficiently distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i), particularly since an ampersand cannot be reproduced in a URL. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).
Additionally, Respondent’s <earthandsky.org> domain name is confusingly similar to
Complainant’s mark because Respondent’s domain name is phonetically identical
to Complainant’s EARTH & SKY mark.
The Panel finds that the phonetic similarity of Respondent’s domain name
to Complainant’s mark also renders it confusingly similar under Policy ¶ 4(a)(i). See Hewlett-Packard Co. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <earthandsky.org>
domain name. Complainant’s allegations
establish a prima facie case which shifts the burden to Respondent to
prove that it has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
The Panel assumes Respondent has no rights or legitimate
interests here in the <earthandsky.org>
domain name because Respondent has failed to respond to the Complaint. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO
Complainant alleges that Respondent is using the <earthandsky.org> domain name to redirect Internet users to Respondent’s website displaying links and advertisements to unrelated third-party websites. Respondent’s use of the disputed domain name to advertise and display links to unrelated websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Finally, Respondent has offered no evidence and none is
present in the record to indicate that Respondent is commonly known by the <earthandsky.org> domain name. Respondent’s WHOIS information identifies
Respondent as “eCommerce Advertising.” Therefore, Respondent has failed to establish
rights or legitimate interests in the <earthandsky.org>
domain name under Policy ¶ 4(c)(ii). See Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat.
Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <earthandsky.org> domain name, which
is confusingly similar to Complainant’s mark, to redirect Internet users to
Respondent’s website displaying links and advertisements to unrelated
third-parties. The Panel finds that such
use constitutes disruption and is evidence of bad faith under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO
Additionally, Respondent is using the <earthandsky.org> domain name to
redirect Internet users to Respondent’s website advertising and displaying
links to unrelated websites for the assumed profit of Respondent. The Panel finds that because Respondent’s
domain name is confusingly similar to Complainant’s mark, Internet users may become
confused as to Complainant’s affiliation with the website. Presumably, Respondent is profiting from this
confusion through click-through fees and the sale of advertisements. As a result, Respondent’s use of the <earthandsky.org> domain name to advertise
and link Internet users to unrelated third parties constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94381
(Nat. Arb. Forum
The Panel finds 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 <earthandsky.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 26, 2007
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