Savin Corporation v. Copier Dealers, Inc.
c/o John Simon
Claim
Number: FA0304000155903
Complainant is
Savin Corporation, Stamford, CT (“Complainant”) represented
by David A. Einhorn of Anderson Kill & Olick, P.C. Respondent
is Copier Dealers Inc. c/o John Simon New York, NY
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <savin-copiers.com>, <savincopierdiscount.com>,
<savincopiersdirect.com> and <savincopierclearance.com>
registered with Enom, Inc.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 28, 2003; the Forum received a hard copy of the
Complaint on May 1, 2003.
On
May 1, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <savin-copiers.com>,
<savincopierdiscount.com>, <savincopiersdirect.com>
and <savincopierclearance.com> are registered with Enom, Inc. and
that Respondent is the current registrant of the names. Enom, Inc. has verified
that Respondent is bound by the Enom, Inc. 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
May 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 29, 2003 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@savin-copiers.com, postmaster@savincopierdiscount.com,
postmaster@savincopiersdirect.com and postmaster@savincopierclearance.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
June 16, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Crary 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <savin-copiers.com>,
<savincopierdiscount.com>, <savincopiersdirect.com>
and <savincopierclearance.com> domain names are confusingly similar
to Complainant’s SAVIN mark.
2. Respondent does not have any rights or
legitimate interests in the <savin-copiers.com>, <savincopierdiscount.com>,
<savincopiersdirect.com> and <savincopierclearance.com>
domain names.
3. Respondent registered and used the <savin-copiers.com>,
<savincopierdiscount.com>, <savincopiersdirect.com>
and <savincopierclearance.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds four trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the SAVIN mark, the earliest being Reg. No. 836,540
(registered on October 10, 1967) in relation to developing liquid for office
copiers. Complainant also holds trademark registrations with the USPTO related
to photocopying machines and parts thereof, maintenance and repair services for
photocopiers and word processors, and facsimile machines. Complainant operates
a website at <savin.com>.
Respondent
registered the <savin-copiers.com>, <savincopierdiscount.com>,
<savincopiersdirect.com> and <savincopierclearance.com>
domain names (hereinafter the “disputed domain names”) on August 12, 2002 and
August 20, 2002. Respondent has not and is not currently using the disputed
domain names.
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 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.
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.
Complainant has
established that it has rights in the SAVIN mark through registration with the
USPTO and continuous use in commerce since at least 1967.
Respondent’s
disputed domain names are confusingly similar to Complainant’s SAVIN mark
because each of the domain names appropriates Complainant’s entire mark and
merely adds generic terms such as “copier,” “discount” and “clearance” to the
end of the mark. The addition of generic terms to Complainant’s famous mark does
not significantly distinguish the disputed domain names from the mark pursuant
to Policy ¶ 4(a)(i) because Complainant’s SAVIN mark remains the dominant
element of the domain names. See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
that “[n]either the addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
The
Panel finds that Policy ¶ 4(a)(i) has been established.
Respondent has
failed to respond to the allegations presented to the Panel in the Complaint.
Therefore, the Panel may accept all reasonable allegations and inferences in
the Complaint as true. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Moreover, the
absence of a Response allows the Panel to presume that Respondent lacks any
rights to or legitimate interests in the disputed domain names for the purposes
of Policy ¶ 4(a)(ii) because of Respondent’s failure to defend its rights or to
demonstrate its interests. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Respondent has
not used and is not presently using the disputed domain names. Each of the
domain names resolves to a portal website, <namecheap.com>. The
registration of a domain name and the subsequent non-use of said domain name
for a period of time is commonly referred to as passive holding. Respondent’s passive
holding of the disputed domain names is 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). See Pharmacia
& Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no
rights or legitimate interests where Respondent failed to submit a Response to
the Complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261
(Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest
can be found when Respondent fails to use disputed domain names in any way).
Furthermore,
Respondent has provided no proof and there is no evidence in the record that
indicates Respondent is commonly known by any of the disputed domain names.
Thus, Respondent has failed to establish that it has any rights to or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent has not used the disputed domain names since the
registration of the domain names in August 2002. The Panel infers that the
disputed domain names have been registered and used in bad faith because of
Respondent’s passive holding of the domain names. See Caravan
Club v. Mrgsale, FA 95314
(Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the
domain name or website that connects with the domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith).
Moreover,
Complainant has produced evidence that indicates Respondent has registered
domain names that appropriate famous marks in a similar vein to the disputed
domain names, including <ricohcopierdiscount>,
<ricohcopiersdirect.com> and <canoncopierdiscount.com>. The Panel
finds that Respondent’s registration and use of numerous domain names that
include famous marks and generic terms demonstrate a pattern of registering
domain names to prevent the owner of a trademark or service mark from
reflecting the mark in a corresponding domain name, which is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(ii). See Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a
pattern of conduct where the Respondent registered numerous domain names with
the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>,
<saab2000.net>, etc.); see also
BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of
other domain name registrations incorporating others’ trademarks and the fact
that the domain names in question do not link to any on-line presence or
website).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <savin-copiers.com>, <savincopierdiscount.com>,
<savincopiersdirect.com> and <savincopierclearance.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated:
July 9, 2003
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