SDI Technologies Inc. v. Kim Cook
Claim Number: FA1203001436742
Complainant is SDI Technologies Inc. (“Complainant”), represented by Peter S. Sloane of Leason Ellis LLP, New York, USA. Respondent is Kim Cook (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ihomeclockradio.net>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2012; the National Arbitration Forum received payment on March 27, 2012.
On March 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ihomeclockradio.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ihomeclockradio.net. Also on March 29, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant alleges:
· Complainant designs, manufactures, and markets electronic products, including alarm clocks, clock radios, and speakers.
· Complainant markets some of its products under its IHOME mark.
· Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its IHOME mark (e.g., Reg. No. 3,298,148 registered September 25, 2007) and in many other countries.
· Respondent registered the <ihomeclockradio.net> domain name on December 23, 2011.
· Respondent’s <ihomeclockradio.net> domain name is confusingly similar to Complainant’s IHOME mark.
· The website resolving from the disputed domain name contains information regarding Complainant’s IHOME products and contains hyperlinks that resolve to third parties that sell competing clocks.
· Respondent was not known by the <ihomeclockradio.net> domain name prior to Complainant’s rights in the IHOME mark.
· Respondent’s use of the disputed domain name disrupts Complainant’s business.
· Respondent attempts to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name.
· Respondent had actual and constructive knowledge of Complainant’s IHOME mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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."
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.
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.”).
Complainant argues, and this Panel accepts, that it owns rights in its IHOME mark based on its wide and extensive use of the mark and the trademark registrations Complainant owns with the USPTO (e.g., Reg. No. 3,298,148 registered September 25, 2007), and in many other countries. While Respondent resides or operates in New Zealand, Complainant’s USPTO trademark registrations, and in other countries other than New Zealand, establish rights in its IHOME mark under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <ihomeclockradio.net> domain name is confusingly similar to Complainant’s IHOME mark because the disputed domain name contains Complainant’s mark, the term “clock radio” which is descriptive of Complainant’s clock radio products, and the generic top-level domain (“gTLD”) “.net.” 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).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges, and this Panel finds, that Respondent was not known by the <ihomeclockradio.net> domain name prior to Complainant using the IHOME mark. Complainant asserts, and this Panel finds, that Respondent is not affiliated with Complainant. The WHOIS information identifies “Kim Cook” as the registrant of the disputed domain name. Based on this evidence and Respondent’s failure to respond, the Panel holds that Respondent is not commonly known by the <ihomeclockradio.net> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s home page is entitled “Why You Should Get an iHome Clock Radio?” and contains information regarding Complainant’s IHOME products. The resolving website also features hyperlinks that resolve to websites for Complainant’s competitors selling competing clocks. Complainant avers, and this Panel finds, that Respondent commercially benefits from these hyperlinks. Such use does not establish rights or legitimate interests in the <ihomeclockradio.net> domain name. Based on this evidence, the Panel holds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <ihomeclockradio.net> domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent's offering of information regarding Complainant's own products and hyperlinks for Complainant’s competitors indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant alleges, and this Panel finds, that Respondent’s hosting of competing hyperlinks disrupts Complainant’s business. Thus, the Panel holds that Respondent uses the <ihomeclockradio.net> domain name in bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends, and this Panel finds, that Respondent attempts to create a likelihood of confusion by featuring information about Complainant’s IHOME products. Such action falsely implies an affiliation between Complainant and Respondent and further supports a finding of bad faith use of the domain name. See Savin Corp. and Ricoh Corp. v. Schisler, FA 294206 (Nat. Arb. Forum Aug. 25, 2004).
Thus, Complainant has also satisfied ¶ 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ihomeclockradio.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 3, 2012
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