national arbitration forum

 

DECISION

 

Simple Truths, LLC v. VivaWorld c/o Web Manager

Claim Number: FA0704000956505

 

PARTIES

 

Complainant is Simple Truths, LLC (“Complainant”), represented by Margaret M. Donnell, of Vanek, Vickers & Masini, P.C., 111 S. Wacker Drive, Suite 4050, Chicago, IL 60606.  Respondent is VivaWorld c/o Web Manager (“Respondent”), 358 Woodlands Avenue 5, #02-374, Singapore 730358, Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <whatisyourdash.com>, registered with Go Daddy Software, 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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2007.

 

On April 10, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <whatisyourdash.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 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@whatisyourdash.com by e-mail.

 

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

 

On May 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <whatisyourdash.com> domain name is confusingly similar to Complainant’s THE DASH mark.

 

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

 

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

 

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

 

FINDINGS

 

Complainant, Simple Truths, LLC, has used THE DASH mark in connection with the sale of goods and services related to a poem written by Complainant in 1996 entitled “THE DASH.”  THE DASH poem has since been reprinted in a number of commercial sources, including the sale of the poem in her own book named under THE DASH mark, as well as textbooks and other books such as philosophical and poetry volumes, and finally as a movie available for sale on DVD since at least 1996.  The poem under THE DASH mark has also been featured on a number of television and radio programs as well as several national magazines, such as Family Circle and U.S. News & World Report.  Additionally, Complainant holds a copyright certificate with the U.S. Copyright Office for the poem under THE DASH mark (Reg. No. Txu-858-108 issued June 15, 1998).  Complainant has registered the <thedash.net> and <thedashpoemmovie.com> domain names which it uses in connection with the distribution and sale of goods under THE DASH mark.

 

Respondent registered the <whatisyourdash.com> domain name on October 1, 2006.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying Complainant’s THE DASH mark as well as Complainant’s poem and poem movie in their entirety making no mention as to Complainant as the author or copyright owner.  Respondent is also using the <whatisyourdash.com> domain name to display a banner advertisement.

 

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 is not required under the Policy to hold a trademark to establish rights in THE DASH mark.  Common law rights are sufficient to satisfy Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Complainant has used THE DASH mark in reference to its poem and products sold in association with THE DASH mark since at least 1996.  Complainant has provided evidence of commercial use through the sale of several different types of books containing the poem under THE DASH mark.  Furthermore, Complainant has obtained a copyright for the poem under THE DASH mark.  The Panel finds that Complainant’s continuous commercial use of THE DASH mark since at least 1996 and Complainant’s copyright of the material under THE DASH mark has created substantial consumer recognition and a secondary meaning in THE DASH mark sufficient to establish common law rights under 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 S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

 

Respondent’s <whatisyourdash.com> domain name is confusingly similar to Complainant’s THE DASH mark because Respondent merely omits the preposition “the” from Complainant’s mark.  The Panel finds that the deletion of a preposition does not alter the domain name sufficiently to distinguish it from the mark under Policy ¶ 4(a)(i).  See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names  were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark).

 

The Respondent also adds the generic words “what is your” to the mark.  The Panel finds that the addition of these words does not sufficiently negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

Finally, panels have previously held, and this Panel finds, that the addition of a generic top-level domain (“gTLD”) is not relevant to the determination of whether a mark is confusingly similar under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <whatisyourdash.com> domain name.  Complainant’s submission establishes a prima facie case which shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 Panel assumes Respondent has no rights or legitimate interests here because Respondent has failed to respond to the Complaint.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); 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.”).  However, the Panel will consider all available evidence in determining whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant alleges that Respondent is using the <whatisyourdash.com> domain name to redirect Internet users to Respondent’s website which displays copyrighted material from Complainant including the poem movie under THE DASH mark without attributing the copyrighted material to Complainant.  Additionally, Respondent is using the disputed domain name to display a banner advertisement.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s website displaying copyrighted material used without permission and banner advertisements is not a use in connection with 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Mayo v. Crowder, FA 114592 (Nat. Arb. Forum July 30, 2002) (holding that the respondent’s use of copyrighted material to advertise identical goods and services as the complainant under the mark failed to show rights or legitimate interests in the mark by the respondent).

 

Finally, Respondent has offered no evidence and none is present in the record to indicate that Respondent is commonly known by the <whatisyourdash.com> domain name.  Respondent’s WHOIS information identifies Respondent as “VivaWorld.”  Therefore, Respondent has failed to establish rights or legitimate interests in the <whatisyourdash.com> domain name under Policy ¶ 4(c)(ii).  See Mayo v. Crowder, FA 114592 (Nat. Arb. Forum July 30, 2002) (finding the respondent had no rights or legitimate interest under Policy ¶ 4(c)(ii) where the respondent used the complainant’s copyrighted materials and targeted the same consumers); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <whatisyourdash.com> domain name, which is confusingly similar to Complainant’s THE DASH mark, to redirect Internet users to Respondents website displaying copyrighted material including Complainant’s poem and poem movie in their entirety without attributing the material to Complainant.  The Panel finds that Respondent’s use of Complainant’s copyrighted material, when Complainant’s THE DASH mark has been used for eight years prior to Respondent’s registration, shows that Respondent knew of Complainant’s business and attempted to capture Complainant’s consumers.  The Panel finds that Respondent registered the disputed domain name despite actual knowledge of Complainant’s THE DASH mark which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Deltathree Inc. v. Bashir, FA 124510 (Nat. Arb. Forum Nov. 9, 2002) (finding that the respondent’s use of copyrighted material from the complainant’s website is evidence that the respondent had actual knowledge of the complainant’s mark prior to registration of the disputed domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

 

Respondent is using the <whatisyourdash.com> domain name to redirect Internet users to Respondent’s website displaying a banner advertisement.  The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s THE DASH mark, Internet users may become confused as to Complainant’s affiliation with the website.  Presumably, Respondent is profiting from this confusion.  As a result, Respondent’s use of the <whatisyourdash.com> domain name to display a banner advertisement constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).

 

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

 

DECISION

 

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <whatisyourdash.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  May 29, 2007

 

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