Alcoa Inc. v. Michele Dinoia d/b/a
SZK.com
Claim
Number: FA0401000227654
Complainant is Alcoa Inc. (“Complainant”), represented
by Daniel C. Abeles, of Eckert Seamans Cherin & Mellott, Alcoa Technical Center, 100
Technical Drive, Alcoa Center, PA 15069.
Respondent is Michele Dinoia d/b/a SZK.com (“Respondent”), Via Trilussa 11, Pineto, Italy 64025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwalcoa.com>, registered with Onlinenic,
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 19, 2004; the Forum received a hard copy of the
Complaint on January 19, 2004.
On
January 19, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the
domain name <wwwalcoa.com> is registered with Onlinenic, Inc. and
that Respondent is the current registrant of the name. Onlinenic, Inc. has
verified that Respondent is bound by the Onlinenic, 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
January 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 12, 2004 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@wwwalcoa.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
February 20, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf
(Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwalcoa.com>
domain name is confusingly similar to Complainant’s ALCOA mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwalcoa.com> domain name.
3. Respondent registered and used the <wwwalcoa.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the ALCOA mark in commerce since 1929 and holds registrations worldwide,
including in Italy, Respondent’s listed country of resident and the United
States. Complainant holds several
registrations for the ALCOA mark with the U.S. Patent and Trademark Office
(“USPTO”), including Reg. Nos. 231,389 and 1,002,390 (registered on August 16,
1927 and October 14, 1975, respectively).
Complainant uses the <alcoa.com> domain name in conjunction with
its business.
Respondent
registered the <wwwalcoa.com> domain name on June 19, 2003. Complainant asserts that Respondent uses the
domain name to redirect Internet users to a commercial search engine.
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 ALCOA mark through registration of the mark with the
USPTO. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <wwwalcoa.com>
domain name is confusingly similar to Complainant’s ALCOA mark because the
domain name fully incorporates the mark and merely adds the “www” prefix and
the generic top-level domain “.com” to the mark. Respondent’s addition of the “www” prefix and “.com” is
insufficient to distinguish the <wwwalcoa.com> domain name from
the mark. See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from Complainant's NEIMAN-MARCUS mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic top-level
domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response; 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel
presumes that Respondent lacks rights and legitimate interests in the <wwwalcoa.com>
domain name. See 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); see also 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).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <wwwalcoa.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
Complainant has
asserted that Respondent commercially benefits from the misleading domain name
by redirecting unsuspecting Internet users to a commercial search engine. In the absence of a Response, the Panel
accepts Complainant’s assertion as true.
Therefore, the Panel concludes that Respondent’s use of a domain name,
confusingly similar to Complainant’s mark for commercial benefit does not constitute
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 Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5,
2003) (holding that Respondent’s use of the disputed domain name, a simple
misspelling of Complainant’s mark, to divert Internet users to a website that
featured pop-up advertisements and an Internet directory, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the domain name).
In addition,
Respondent’s registration and use of the <wwwalcoa.com> domain
name constitutes typosquatting.
Respondent’s domain name takes advantage of Internet users who intend to
access Complainant’s <alcoa.com> domain name but mistakenly forget to
place a period between the “www” prefix and Complainant’s mark. Typosquatting itself is evidence that
Respondent lacks rights and legitimate interests in the domain name. See Diners Club Int’l Ltd. v.
Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights or legitimate interests in the
disputed domain name vis á vis Complainant); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where
Respondent used the typosquatted <wwwdewalt.com> domain name to divert
Internet users to a search engine webpage, and failed to respond to the
Complaint).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent had actual or constructive knowledge of Complainant’s ALCOA
mark because the mark is registered throughout the world, including
Respondent’s country of residence and the mark is fanciful. Registration of a domain name that is confusingly
similar to a mark, despite knowledge of the mark holder’s rights, is evidence
of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Pfizer, Inc. v.
Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding
Respondent “was aware of and had knowledge of” Complainant’s mark when
registering the domain name because Complainant’s mark was a coined arbitrary
term with no meaning apart from Complainant’s products).
Furthermore,
Respondent has used the misleading domain name for commercial benefit. Therefore, the Panel concludes that
Respondent’s registration and use of the domain name constitutes bad faith
pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum
June 3, 2003) (stating that “[s]ince the disputed domain names contain entire
versions of Complainant’s marks and are used for something completely unrelated
to their descriptive quality, a consumer searching for Complainant would become
confused as to Complainant’s affiliation with the resulting search engine
website” in holding that the domain names were registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Lastly,
Respondent’s typosquatting is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See RE/MAX Int’l, Inc. v. Seocho, FA
142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s
registration of the <wwwremax.com> domain name, incorporating
Complainant’s entire mark, was done with actual notice of Complainant’s rights
in the mark prior to registering the infringing domain name, evidencing bad
faith); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”).
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 <wwwalcoa.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
March 3, 2004
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