Savin Corporation v. Cal Toner c/o Domain
Manager
Claim
Number: FA0401000230934
Complainant is Savin Corporation, Stamford, CT
(“Complainant”) represented by David A.
Einhorn, of Anderson Kill & Olick, P.C., 1251 Ave. of the Americas, New York, NY
10020-1182. Respondent is Cal Toner c/o Domain Manager,
5550 W. Wilshire Blvd., Los Angeles, CA 90210 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <savintoner.com> and <gestetnertoner.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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 22, 2004; the Forum received a hard copy of the
Complaint on January 26, 2004.
On
January 29, 2004, Enom, Inc. confirmed to the Forum that the domain names <savintoner.com>
and <gestetnertoner.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
February 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 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@savintoner.com and
postmaster@gestetnertoner.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
March 3, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin 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 <savintoner.com>
and <gestetnertoner.com> domain names are confusingly similar to
Complainant’s SAVIN and GESTETNER-related
marks.
2. Respondent does not have any rights or
legitimate interests in the <savintoner.com> and <gestetnertoner.com>
domain names.
3. Respondent registered and used the <savintoner.com>
and <gestetnertoner.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
the registration for the SAVIN mark, which was registered with the United
States Patent and Trademark Office (“USPTO”) on October 10, 1967 (Reg. No.
836540). The mark is used in connection
with the development of liquid for photocopy machines, photocopying machines
themselves, and copy paper for photocopy machines. In addition, Complainant owns several other registrations for the
SAVIN mark with the USPTO, including registration numbers: 1174900 (Oct. 27,
1981); 1500782 (Aug. 16, 1988; 2230303 (Mar. 9, 1999).
Complainant also
owns several registration applications with the USPTO for marks containing the
term GESTETNER, including: PREMIUM COPIER DP GESTETNER (Ser. No. 76/475593)
(paper for use with business machinery); GDP DUAL-PURPOSE GESTETNER (Ser. No.
76/475768) (paper and recycled paper for use with business machinery);
GESTETNER 3-UP CARDS (Ser. No. 76/493424) (converted paper product which is
comprised of strips of attached index cards which can be printed using a laser
printer or a photocopier and then separated into individual index cards at
perforations).
Gestetner was
first incorporated in 1881 and merged with Savin Corporation in 1988.
Respondent
registered the disputed domain names <savintoner.com> and <gestetnertoner.com>
on January 19, 2003 and October 2, 2003, respectively.
Respondent is
using the <savintoner.com> domain name to sell Complainant’s toner
products that are used with Complainant’s office equipment.
Respondent is
not using the <gestetnertoner.com> domain name to connect to any
site other than one hosted by the registration service provider
NameCheap.com. The attached website
merely states that the domain name was recently registered and offers
information on purchasing or transferring domin names through NameCheap.com.
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 SAVIN mark through multiple registrations with the
USPTO and continuous use in commerce since 1960. 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 the 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; see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register
all possible domain names that surround its substantive mark does not hinder
Complainant’s rights in the mark. “Trademark owners are not required to create
‘libraries’ of domain names in order to protect themselves.”).
The combined
facts that Complainant owns multiple trademark applications for marks
containing the term GESTETNER and that the mark has been in use since the
incorporation of the former Gestetner company in 1880, which merged with
Complainant in 1998, establish Complainant’s rights in the GESTETNER mark under
the Policy. See McCarthy on
Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The
ICANN dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also
SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that Complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist. Rights in the mark can be established by pending
trademark applications); see also British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”).
The disputed
domain names are confusingly similar to Complainant’s marks. In this context, it is obvious that the <savintoner.com>
domain name contains Complainant’s SAVIN mark in its entirety. Furthermore, the term GESTETNER is the
principal element of the trademarks applied for with the USPTO. Respondent has merely added the generic or
descriptive term “toner” to the marks, which describes the specific type of
products sold by Complainant, which fails to sufficiently distinguish the
domain names from Complainant’s marks.
Moreover, the addition of a generic top-level domain is irrelevant under
the Policy. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish identical or confusing similarity
for purposes of the Policy”); see also
Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO
Jan. 29, 2001) holding that confusing similarity under the Policy is decided
upon the inclusion of a trademark in the domain name; 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; see also Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark; see also Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) finding the <westfieldshopping.com> domain
name confusingly similar because the WESTFIELD mark was the dominant element; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) finding that the addition of a top-level domain is without legal
significance.
Therefore,
Complainant has successfully established Policy ¶ 4(a)(i).
Failing to
submit a Response to a Complaint has consistently been construed as an implicit
admission that a Respondent lacks rights to and legitimate interests in a
domain name. In this case, the Panel
chooses to adopt this approach. See Do the Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to
come forward to [contest complainant’s allegations] is tantamount to admitting
the truth of complainant’s assertion in this regard.”); 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; see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where
Respondent fails to respond; 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;
see also Vert. 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.
Having failed to respond to the
Complaint, Respondent has passed on the opportunity to present evidence to show
that Respondent is commonly known by the disputed domain names. As such, there is nothing in the record to
indicate that Respondent has rights or legitimate interests in the names
pursuant to Policy ¶ 4(c)(ii). In
addition, Respondent is not authorized to use Complainant’s marks. 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 Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply; 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; see also Telstra
Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) finding that
Respondent lacked rights and legitimate interests in the domain name because
Respondent was not authorized by Complainant to use its trademarks and the mark
was distinct in its nature, such that one would not legitimately choose it
unless seeking to create an impression of an association with Complainant.
Respondent is
not using the disputed domain name <savintoner.com> in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)
because Respondent has appropriated Complainant’s SAVIN mark in the name in
order to sell Complainant’s goods in direct competition with Complainant. 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; see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods.
In regard to the
<gestetnertoner.com> domain name, Respondent has failed to offer
demonstrable evidence of its preparations to use the name in connection with a
website. Merely connecting the name to
a portal website does not convey rights or legitimate interests in the
name. 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 Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept.
18, 2000) finding that prior to any notice of the dispute, Respondent had not
used the domain names in connection with any type of bona fide offering of
goods and services; see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name; see also LFP,
Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002)
(A Respondent cannot simply do nothing and effectively “sit on his rights” for
an extended period of time when that Respondent might be capable of doing
otherwise.); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding that use of Complainant’s mark
“as a portal to suck surfers into a site sponsored by Respondent hardly seems
legitimate”.
Therefore, Complainant has successfully
established Policy ¶ 4(a)(ii).
Respondent
registered and used the disputed domain name <savintoner.com> in
bad faith pursuant to Policy ¶ 4(b)(iv) because the name is confusingly similar
to Complainant’s SAVIN mark and Respondent is using the name to intentionally
divert potential customers of Complainant to Respondent’s website for
commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain; see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) finding that Respondent intentionally attempted
to attract Internet users to his website for commercial gain by creating a
likelihood of confusion with Complainant’s mark and offering the same services
as Complainant via his website; see
also Scholastic Inc. v.
Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) finding
bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain
name at issue to resolve to a website offering similar services as Complainant
into the same market.
Respondent also
registered and is using the <gestetnertoner.com> domain name in
bad faith because it has not shown demonstrable preparations to use the domain
name and merely resolves the name to a site sponsored by its registration
service provider. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy; 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; see
also 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.
Therefore,
Complainant has established 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 <savintoner.com> and <gestetnertoner.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 16, 2004
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