Zuno, Inc. d/b/a Birthday Alarm (formerly Birthday Alarm, LLC) v. Birthday Alarm LLC / Lucinda Gray
Claim Number: FA1207001455708
Complainant is Zuno, Inc. d/b/a Birthday Alarm (formerly Birthday Alarm, LLC) (“Complainant”), represented by Suzan Canli of Zuno, Inc. d/b/a Birthday Alarm (formerly Birthday Alarm, LLC), California, USA. Respondent is Birthday Alarm LLC / Lucinda Gray (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <birthdaya1arm.com>, registered with eNom, Inc.
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 July 27, 2012; the National Arbitration Forum received payment on July 27, 2012.
On July 30, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <birthdaya1arm.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 July 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@birthdaya1arm.com. Also on July 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 23, 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’s Contentions
i. Respondent is using the disputed domain name to pass itself off as Complainant.
ii. There is no company by the name of “Birthday Alarm LLC,” as the WHOIS information states, either in California or Delaware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <birthdaya1arm.com> domain name on March 2, 2009.
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 asserts that it owns a trademark registration with the USPTO for its BIRTHDAY ALARM mark (Reg. No. 3,571,822 registered February 10, 2009). Complainant provides a printout of the Trademark Certificate from the USPTO to verify its claims. The Panel notes, however, that the Trademark Certificate given by Complainant identifies “Birthday Alarm, LLC” as the registrant. Complainant contends that “Birthday Alarm, LLC” was its former business name and that it is currently doing business as “Birthday Alarm” after it merged with “Zuno, Inc.” This allegation is not contested by Respondent. Therefore, the Panel finds that Complainant has established rights in the BIRTHDAY ALARM mark under Policy ¶ 4(a)(i).
Complainant contends that the <birthdaya1arm.com> domain name is confusingly similar to the BIRTHDAY ALARM mark because the domain name merely includes a typo of Complainant’s mark. The Panel notes that the disputed domain name removes the space from between the terms of the mark, replaces the letter “l” with the number “1”. The Panel finds that such a change is not sufficient to remove the disputed domain name from the realm of confusing similarity. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). Therefore, the Panel finds that the <birthdaya1arm.com> domain name is confusingly similar to Complainant’s BIRTHDAY ALARM mark under Policy ¶ 4(a)(i).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant states that the “Birthday Alarm LLC” portion of Respondent’s name, “Birthday Alarm LLC / Lucinda Gray,” as noted in the WHOIS information, was Complainant’s pre-merger business name. Complainant also notes that the name “Lucinda” is identified as Complainant’s contact person on its own website. The Panel notes that Respondent has not come forward with any evidence indicating that it is actually conducting business under the “Birthday Alarm LLC” name or that it has been commonly known by that name or the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), even though the WHOIS information is similar to the disputed domain name. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant notes that Respondent’s resolving website is a copy of Complainant’s home page with a “log in” screen for purchasing products. Complainant has provided a screenshot of the resolving website to show the “log in” screen of Respondent’s website. Based upon this evidence, the Panel finds that Respondent is attempting to pass itself off as Complainant, 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is resolving the disputed domain name to a website that is a “mock copy” of Complainant’s home page. Complainant asserts that Respondent is using the confusingly similar domain name to lure Internet users to Respondent’s website so that Respondent can impersonate Complainant. The Panel finds that Respondent’s use of the disputed domain name constitutes an attempt to pass itself off as Complainant, which has been found to be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
Thus, Complainant has satisfied 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 <birthdaya1arm.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 6, 2012
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