DECISION

 

MathSoft Engineering & Education, Inc. v. RaveClub Berlin

Claim Number: FA0111000101825

 

PARTIES

Complainant is MathSoft Engineering & Education, Inc., Cambridge, MA (“Complainant”) represented by Brenda R. Sharton, of Goodwin Procter LLP.  Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”)..

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <studyworkonline.com>, registered with CORE.

 

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.

 

Hon. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 9, 2001; the Forum received a hard copy of the Complaint on November 13, 2001.

 

On November 12, 2001, CORE confirmed by e-mail to the Forum that the domain name <studyworkonline.com> is registered with CORE and that Respondent is the current registrant of the name.  CORE has verified that Respondent is bound by the CORE 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 November 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 5, 2001 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@studyworkonline.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On December 13, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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

The <studyworkonline.com> domain name is confusingly similar to Complainant’s federally registered STUDYWORKS mark.

 

Respondent has no rights or legitimate interests in respect to the <studyworkonline.com> domain name.

 

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

 

B. Respondent

No Response was received.

 

FINDINGS

Since 1996, Complainant has used its STUDYWORKS mark in connection with academic and educational computer software for children and teenagers.  Complainant obtained registration of its STUDYWORKS mark on the Principal Register of the United States Patent and Trademark Office on October 21, 1997, as Registration No. 2,192,085.

 

Respondent registered the <studyworkonline.com> domain name on February 18, 2000.  Respondent’s only use of the disputed domain name has been to engage in “mousetrapping,” where several browser windows are automatically opened when an Internet user arrives at a domain name.  Commonly, and consistent with Respondent’s use of the <studyworkonline.com> domain name, the practice of mousetrapping involves displaying numerous windows containg advertising.

 

On September 11, 2001, Complainant’s counsel sent Respondent a cease and desist letter via email.  On the same day, Respondent replied to Complainant in an email message containing vulgar and offensive language.  Furthermore, Respondent threatened to file a “frivolous lawsuit” against Complainant if Respondent received any further “harassing” letters from Complainant.

 

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

The disputed domain name is confusingly similar to Complainant’s STUDYWORKS registered mark.  The deletion of the letter “s” from Complainant’s mark, and the addition of the word “online” are not enough to take the disputed domain name out of the realm of confusing similarity.  See American Airlines Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com> "effectively identical and certainly confusingly similar" to Complainant's AMERICAN AIRLINES registered marks); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

 

It is not necessary that Complainant have a registered trademark in the domain name itself in order to establish that a domain name is identical or confusingly similar to a mark in which the Complainant has rights.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required-unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).

 

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

 

Rights or Legitimate Interests

In light of Respondent’s failure to submit a Response, it is well established that Panels may take all of Complainant’s allegations as true.  See 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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the complaint).

 

It is equally well established that a failure to submit a Response indicates that a Respondent has no rights or legitimate interests in respect to a disputed domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because the Respondent never submitted a response nor provided the panel with evidence to suggest otherwise).

 

There is no evidence that Respondent is using the <studyworkonline.com> domain name in connection with a bona fide offering of goods or services, is commonly known by the disputed domain name, or is making a legitimate noncommercial or legitimate fair use of the disputed domain name pursuant to Policy ¶ 4(c).  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect to the <studyworkonline.com> domain name.

 

Registration and Use in Bad Faith

Respondent’s registration and use of the <studyworkonline.com> domain name is in bad faith pursuant to Policy ¶ 4(b)(iv), as Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s STUDYWORKS registered mark.  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

 

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 the request relief shall be hereby granted.

 

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

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme court, NY ( Ret.)

 

Dated: December 14, 2001