Toastmasters International v. Jeremy
Vaught d/b/a VotCom Development
Claim
Number: FA0311000209571
Complainant is Toastmasters International (“Complainant”),
represented by Timothy S. Cole, of Ladas & Parry 224 South Michigan Avenue, Floor 12, Chicago, IL
60604, USA. Respondent is Jeremy
Vaught d/b/a VotCom Development (“Respondent”)
6717 West Orchid Lane, Peoria, AZ 85345.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue are <toastmastersonline.org> and
<toastmastersonline.net>, registered with NameSecure.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 7, 2003; the Forum received a hard copy of the
Complaint on November 11, 2003.
On
November 13, 2003, NameSecure.com confirmed by e-mail to the Forum that the
domain names <toastmastersonline.org> and <toastmastersonline.net>
are registered with NameSecure.com and that Respondent is the current
registrant of the names. NameSecure.com has verified that Respondent is bound
by the NameSecure.com 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 13, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 3, 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@toastmastersonline.org
and postmaster@toastmastersonline.net 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 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <toastmastersonline.org>
and <toastmastersonline.net> domain names are confusingly
similar to Complainant’s TOASTMASTERS mark.
2. Respondent does not have any rights or
legitimate interests in the <toastmastersonline.org> and <toastmastersonline.net>
domain names.
3. Respondent registered and used the <toastmastersonline.org>
and <toastmastersonline.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Toastmasters International, was founded in 1924 by Dr. Ralph C. Smedley. It registered marks incorporating the
TOASTMASTERS word as early as 1949 (see e.g. Reg. Nos. 1,505,788, 555,132,
555,137, 386,813), with use dating back to 1924. Complainant also holds the registration for
<toastmasters.org>.
Respondent
registered the <toastmastersonline.org> and <toastmastersonline.net>
domain names on February 8, 2003 and May 15, 2003, respectively. The domain names refer the Internet user to
a page within the <toastmastersonline.org> website. The content of the website indicates that it
will be a “professionally developed site” providing services for TOASTMASTER
clubs. Respondant’s website also
includes a statement of rights in the TOASTMASTER mark, stating that
Complainant’s marks “are trademarks protected in the United States, Canada, and
other countries where Toastmaster Clubs exist.
Unauthorized use is prohibited.”.
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 rights in the TOASTMASTERS
mark through registration in the United States as well as its continuous and
extensive use of the mark since 1924.
Respondent’s <toastmastersonline.org> and <toastmastersonline.net> domain names are
confusingly similar to Complainant’s mark because they incorporate the entirety
of Complainant’s mark and merely add the generic term “online.” The addition of the term “online” does not
create a distinct name because “online” merely signifies that an entity is on
the Internet. As a result, <toastmastersonline.org> and <toastmastersonline.net> are confusingly
similar to the mark. See 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical mark
of Complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Respondent has failed to respond. In the absence of a Response, the Panel is
permitted to accept all reasonable allegations as true. See
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); 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”). Furthermore, based on Respondent’s failure
to respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain name,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and 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 Respondent never submitted a Response nor provided the Panel with
evidence to suggest otherwise).
Respondent has used the disputed domain to offer
services to Complainant’s membership and exhibit a statement of Complainant’s
rights in the TOASTMASTER mark. Using
the Complainant’s mark to offer services to the Complainant’s membership while
stating that Complainant has rights in the mark is 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).
See Computerized
Sec. Sys., Inc. d/b/a SAFLOK v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests in a domain
name that utilized Complainant’s mark for its competing website).
Given the WHOIS information, Respondent is not
commonly known as TOASTMASTERS, <toastmastersonline.org>, or <toastmastersonline.net>. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in the disputed domain
name 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 interests
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 Policy ¶ 4(a)(ii) has been
satisfied.
Respondent registered and used <toastmastersonline.org> and <toastmastersonline.net> to prepare to
sell services and products in competition with Complainant. It appropriated Complainant’s mark in the
disputed domain name to create a likelihood of confusion for commercial gain. This is bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK
v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates 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 Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where
Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
Exhibiting the Complainant’s trademark statement not
only exacerbates the likelihood of confusion, it also demonstrates that the
Respondent knew of Complainant’s rights, and attempted to usurp those. Registration of a domain name that
incorporates Complainant’s mark, despite knowledge of Complainant’s rights, is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See
Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO
June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration of the <yahooventures.com>
domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <toastmastersonline.org> and
<toastmastersonline.net> domain name be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 22, 2003
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