United Service Organizations v. Spiral Matrix
Claim Number: FA0604000671249
Complainant is United Service Organizations, Inc. (“Complainant”), represented by Keith A. Barritt, of Fish & Richardson P.C., 1425 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Avenue, PO Box 4276-30100, Eldoret, KE Kenya 30100.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <usoeurope.com> and <wwwuso.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2006.
On April 4, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <usoeurope.com> and <wwwuso.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 April 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 2006 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@usoeurope.com and postmaster@wwwuso.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usoeurope.com> and <wwwuso.com> domain names are confusingly similar to Complainant’s USO mark.
2. Respondent does not have any rights or legitimate interests in the <usoeurope.com> and <wwwuso.com> domain names.
3. Respondent registered and used the <usoeurope.com> and <wwwuso.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Service Organizations, Inc., is a non-profit private organization chartered by the U.S. Congress to provide comfort and assistance to military personnel and their families by delivering recreational services to them. Complainant has more than 120 centers around the world, including overseas centers in Europe and the Middle East. Complainant holds several registrations of the USO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 703,682 issued August 30, 1960; Reg. No. 1,731,688 issued November 10, 1992; Reg. No. 1,731,529 issued November 10, 1992; Reg. No. 1,731,854 issued November 10, 1992; Reg. No. 1,733,685 issued November 17, 1992).
Respondent registered the <usoeurope.com> domain name on July 15, 2005 and the <wwwuso.com> domain name on
February 15, 2006. Internet users who
access the <usoeurope.com> domain
name are directed to a website featuring links to websites offering travel,
hotel, and tour services, in direct competition with the services provided by
Complainant for U.S. armed forces personnel stationed in Europe. Internet users who access the <wwwuso.com> domain name are
directed to a website featuring links to websites offering information
regarding “care packages” for U.S. troops and similar services, again in direct
competition with the services provided by Complainant.
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. 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.”).
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.
By registering the USO mark with the USPTO, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <usoeurope.com> domain name is confusingly similar to Complainant’s USO mark, with the only difference being the additions of the geographic term “europe” and the top-level domain “.com.” Likewise, Respondent’s <wwwuso.com> domain name is confusingly similar to Complainant’s mark, with the additions of the letters “www” and the top-level domain “.com.” Because top-level domains are required in all Internet domain names, the addition of the top-level domain “.com” is irrelevant to the analysis of whether Respondent’s domain names are confusingly similar to Complainant’s mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The addition of the geographic term “europe” to Complainant’s mark fails to distinguish Respondent’s <usoeurope.com> domain name from the mark. See JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark). The addition of the letters “www” to Complainant’s mark also fails to distinguish Respondent’s <wwwuso.com> domain name from the mark. See 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 the complainant's NEIMAN-MARCUS mark). Therefore, Respondent’s <usoeurope.com> and <wwwuso.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests in it. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s <usoeurope.com>
and <wwwuso.com> domain names
are confusingly similar to Complainant’s USO mark, and Internet users who
access these domain names are directed to websites featuring links to services
in competition with Complainant’s services.
The Panel presumes Respondent receives payment in exchange for diverting
Internet users to these websites.
Respondent’s use of the disputed domain names is not in connection with
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 TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide
offering of goods or services); see also Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The WHOIS database contains no information implying that Respondent is commonly known by the <usoeurope.com> or <wwwuso.com> domain name. There is no evidence on record that Respondent has ever been commonly known by the disputed domain names, and Complainant asserts that Respondent is not authorized to use its USO mark. The Panel infers that Respondent has no rights or legitimate interests in these domain names under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <usoeurope.com> and <wwwuso.com> domain names, each of which incorporates Complainant’s USO mark in its entirety, to present Internet users with links to websites offering services in competition with Complainant. The Panel infers that Respondent receives click-through fees in return for directing Internet users these other websites. Such use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Respondent’s websites at the
infringing domain names contain several links to websites offering products in
direct competition with Complainant.
The Panel determines that Respondent’s use of Complainant’s mark to
divert Internet users to Complainant’s competitors amounts to disruption of
Complainant’s business under Policy ¶ 4(b)(iii). See Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites).
Additionally, Respondent’s addition of the letters “www” to the beginning of Complainant’s mark is a clear attempt to capitalize on typographical errors, and may confuse Internet users about the relationship between Complainant and the contents of Respondent’s website. Use of a typosquatted version of Complainant’s mark is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] 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 <usoeurope.com> and <wwwuso.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 10, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum