SDC Media, Inc. v. SCMedia
Claim Number: FA0704000960250
PARTIES
Complainant is SDC Media, Inc. (“Complainant”), represented by Marc
J. Kesten, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sdctravel.com> (the “Domain Name”), registered
with Go
Daddy Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On April 19, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 9, 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@sdctravel.com by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission was received on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends:
- That Complainant owns the marks SDC, TRAVEL SDC, SDC TRAVEL, and SDC.COM, used in
connection with travel services
- That SDC (short for “Swingers
Date Club”) is the world’s largest alternative lifestyle site online, with over
one million members worldwide, and with over 18,000,000 hits;
- That Complainant has been using the domain name
<sdc.com> since acquiring it from a previous registrant in 2004, and has
been using other related websites, <travelsdc.com> and
<sdcmedia.com>, since January 2003, and <swingersdateclub.com>
since July 2000;
- That Complainant has used the mark SDC since 1999
and obtained a
-That Respondent uses a confusingly similar Domain
Name for directly competing services, and further that Respondent copied
Complainant’s web site design and layout;
- That Complainant sent an e-mail inquiry to the
Domain Name and received a response not from Respondent in
- That Complainant sought to resolve this matter by
sending a demand letter to Right Connections Travel and received in response a
statement that Right Connections lacked any interest in the Domain Name;
- That the Domain Name suddenly ceased to resolve
to Respondent’s website at about that time, but went back online in December
2006;
- That shortly after the letter was sent, the
contact information for the registrant was changed to “
- That the Domain Name was registered to interfere
with Complainant’s business and cause confusion; and moreover that there have
been instances of actual confusion;
- That Respondent has no legitimate interests in
the disputed domain name because Respondent is not commonly known as SDC, SDC
Travel, or <sdctravel.com>.
- That Respondent’s conduct evidences bad faith by intentionally trying
to cause customer confusion with Complainant’s well known family of SDC marks,
domain names, and business names.
B. Respondent
Respondent contends:
- That Complainant
does not own the trademarks SDC, Travel SDC, SDC Travel and SDC.com, primarily
because no such marks are reflected in the Canadian Trademark Registry;
- That the Domain Name is different from the U.S. registered SDC mark
in that it includes the word “travel” which is not part of Complainant’s
registration;
- That Complainant’s assertions regarding first use are inconsistent
because its
- That Respondent had no knowledge of Complainant at the time of its
registration;
- That any similarities between the websites of the two companies are
coincidental and due to standard tab-navigation features; and that the two use
different color schemes and banners;
- That Right Connections Travel is not the company offering
Respondent’s services, but is one of the companies from whom Respondent sources
its services;
- That Complainant failed to protect its claimed interests or act in a
timely manner to enforce them, and only commenced this proceeding after seeing
the success of Respondent’s marketing.
- That Respondent operates from
- That there is no proof of any buyer making a purchase as a result of
the alleged confusion;
- That there was no deliberate attempt to deceive the public in the
choice of the name “SC Media,” and that its similarity to Complainant’s name is
a mere coincidence.
C. Additional Submissions
Complainant’s Additional Submission contends:
- That Respondent is not properly registered under the name Swingers
Direct Connect [or Connection] Travel under Canadian law;
- That there is no inconsistency regarding Complainant’s claimed dates
of first use in that both its trademark registration and its papers herein
claim a first use date of 1999, well before Respondent registered the Domain
Name;
- That as to any marks for which it does not yet hold federal trademark
registrations, Complainant has common law rights predating any rights
purportedly acquired by Respondent;
- That the two companies are direct competitors and in particular that
Complainant has thousands of Canadian customers.
FINDINGS
The Panel finds that Complainant owns rights
in the mark SDC used in connection with (inter alia) travel services; that the
Domain Name is confusingly similar to the said mark; that Respondent lacks
legitimate rights or interests in the Domain Name; and that Respondent
registered and used the Domain Name in bad faith.
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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 undisputed that Complainant owns a
Complainant has
submitted evidence of its service mark registration for the SDC mark that it
holds with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,818,125 issued
The <sdctravel.com>
domain name is confusingly similar to the SDC mark because Complainant is a
travel company and the disputed domain name combines its SDC mark with the term
“travel.” The addition of a term
describing Complainant’s business is insufficient to differentiate the <sdctravel.com>
domain name from the mark. Moreover, the
addition of the generic top-level domain “.com” is a functional element and is
not a distinguishing difference. In sum,
the Domain Name is confusingly similar to Complainant’s SDC mark pursuant to
Policy ¶ 4(a)(i). See Gillette Co.
v. RFK Assocs., FA 492867
(Nat. Arb. Forum July 28, 2005) (finding that the additions of the term
“batteries,” which described the complainant’s products, and the generic
top-level domain “.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Constellation Wines U.S., Inc. v.
Respondent makes much of its argument that,
because it is located in
Respondent lacks rights or legitimate
interests in the Domain Name. As an
initial matter, once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to show that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See 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); see also ALPITOUR S.p.A. v.
Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶
4(a)(ii) requires that the complainant must show that the respondent has no
rights to or legitimate interests in the subject domain name and that once the complainant
makes this showing, the burden of production shifts to the respondent to rebut
the complainant’s allegations).
Complainant asserts that it is not aware of
any evidence to indicate that Respondent is commonly known by the disputed
domain name. A review of Respondent’s
WHOIS registration information indicates that the registrant of the Domain Name is “SCMedia.” The choice of a corporate name similar to
Complainant’s strikes the Panel as unlikely to be a coincidence; but in any
event the addition of the “d” to that name, thereby incorporating Complainant’s
mark, is unsupported by any plausible argument for rights or legitimate
interests. In sum, the evidence
indicates that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Complainant claims
that Respondent is using the disputed Domain Name to redirect Internet users to
competing travel websites, including a direct competitor of Complainant known
as “Right Connections Travel.” The Panel
agrees that Respondent appears to be diverting Internet users to competing
websites, which does not constitute 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 Florists’
Transworld Delivery v. Malek, FA
676433 (Nat. Arb. Forum
The similarity not
only of the domain names but of the corporate names and of the design of the
web sites themselves suggests a deliberate intent to copy and to trade on
Complainant’s goodwill.
Respondent’s use of the Domain Name to divert
Internet users to its competing business suggests that Respondent registered
the disputed domain name in order to disrupt Complainant’s business, which constitutes
bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc.,
FA 444510 (Nat. Arb. Forum
The Panel also finds that Respondent
registered and is using the Domain Name in bad faith according to Policy ¶
4(b)(iv). Complainant claims that
Respondent’s diversion of Internet users to competing websites is for
Respondent’s own commercial gain, which appears to be the case given the
similarity of services provided. Such
use violates Policy ¶ 4(b)(iv). See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the
respondent’s use of the <arizonashuttle.net> domain name, which contained
the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the
respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also The Univ. of
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 <sdctravel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated:
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