New Concepts Development Corporation d/b/a Other World Computing v. Online Wholesaler Limited
Claim Number: FA0909001285767
Complainant is New Concepts Development Corporation d/b/a Other
World Computing (“Complainant”),
represented by Amy M. Miller of The Garry Law Firm, P.C., Illinois, USA. Respondent is Online Wholesaler Limited (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <owc-online.com>, registered with Wild West Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 23, 2009; the National Arbitration Forum received a hard copy of the Complaint September 23, 2009.
On September 23, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <owc-online.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 2009, 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@owc-online.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <owc-online.com>, is confusingly similar to Complainant’s OWC mark.
2. Respondent has no rights to or legitimate interests in the <owc-online.com> domain name.
3. Respondent registered and used the <owc-online.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, New Concepts
Development Corporation d/b/a Other World Computing, provides high performance
computer hardware, peripherals, accessories, and support services for computers
under the OWC mark. Complainant holds
registration of OWC mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 3,339,919 issued November 20, 2007).
Respondent, Online Wholesaler Limited, registered the <owc-online.com> domain name April 16, 2009. The disputed domain name resolves to a website that offers computer products that are in direct competition with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant sufficiently established
rights in the OWC mark under Policy ¶ 4(a)(i) through its registration of the mark
with the USPTO (Reg. No. 3,339,919 issued
November 20, 2007). See AOL LLC v. AIM Profiles, FA 964479
(Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM
mark through its use and federal trademark registrations for purposes of Policy
¶ 4(a)(i).”); see also SDC Media, Inc. v.
SCMedia, FA 960250 (Nat.
Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the
USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The <owc-online.com> domain name contains Complainant’s mark in its entirety, adds a hyphen, adds the generic term “online,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of these additions to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <owc-online.com> domain name is confusingly similar to Complainant’s OWC mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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 the complainant’s BROADCOM mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from which no response was received. 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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).”).
Respondent’s disputed <owc-online.com>
domain name resolves to a website that offers computer products that directly
compete with Complainant’s business. The
Panel finds that Respondent’s competing use of the disputed domain name does
not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and it does
not constitute a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).
Furthermore, Respondent is listed in the WHOIS information for the disputed domain name as “Online Wholesaler Limited,” which does not indicate that Respondent is commonly known by the <owc-online.com> domain name. Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Moreover, Complainant alleges that it has not authorized or licensed Respondent to use the OWC mark. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
Since Respondent registered the confusingly similar <owc-online.com> domain name on April 16, 2009,
Respondent has used the disputed domain name to
offer competing computer products. The
Panel finds that this use disrupts Complainant’s business. The Panel further finds that such a
disruption constitutes bad faith registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat.
Arb. Forum Dec. 28, 2005) (“Respondent is appropriating
Complainant’s mark to divert Complainant’s customers to Respondent’s competing
business. The Panel also finds that this
diversion is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii).”); see
also 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).
Moreover, the Panel finds that Respondent’s use of the confusingly similar <owc-online.com> domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. The Panel further finds that Respondent’s commercial gain from this likelihood of confusion through the sale of competing products constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <owc-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 9, 2009.
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