Above All Advertising Inc. v. Belize Domain Whois Service Lt
Case No. D2007-0775
1. The Parties
The Complainant is Above All Advertising Inc., San Diego, California, United States of America, represented by Jackson, DeMarco & Peckenpaugh, United States of America.
The Respondent is Belize Domain Whois Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name <abovealladvertising.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2007. On May 30, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 31, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on July 9, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company incorporated in the United States of America conducting its business from California. Its business is advertising, specializing in the marketing, production and sale of products such as balloons and giant inflatable objects. It has been engaged in this business since February 5, 2002 and, since then, it has used the mark ABOVE ALL ADVERTISING to identify its products.
The Complainant is the registrant of the domain name <abovealladvertising.net> which resolves to a website where the Complainant promotes its products and services. The products promoted on the website are advertising products, including custom inflatable shapes, balloons and blimps.
The Respondent registered the disputed domain name on September 11, 2004. It resolves to a website promoting advertising products, including custom inflatable items, balloons and blimps provided by suppliers other than the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the disputed domain name <abovealladvertising.com > should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant’s unregistered common law trademark ABOVE ALL ADVERTISING, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the unregistered common law trademark ABOVE ALL ADVERTISING, which it claims to have acquired because ABOVE ALL ADVERTISING is widely known as the name under which its goods and services are provided. The Complainant contends that it is self-evident that the domain name <abovealladvertising.com > is identical to the ABOVE ALL ADVERTISING mark because they both consist of the same words.
The Complainant contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show that it has not used or made any serious preparations to use the domain name for a bona fide offering of goods and services, that the only use of the domain name has been the illegitimate one of misleading Internet users as to the source of goods promoted by its use, that the Respondent is not commonly known by the domain name, makes no non-commercial or fair use of the domain name and has no other basis for establishing such a right or interest.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the only interpretation that can be reached based on the facts is that the Respondent registered the domain name with the intention of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the products offered on the Respondent’s website and that it has since used the domain name with the same intention.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and many past UDRP panels have found that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
It is, however, possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <abovealladvertising.com> is identical to the asserted trademark ABOVE ALL ADVERTISING, which as a whole has been incorporated into the domain name, which further consists of the gTLD suffix “.com”. In that regard, it has been held many times that suffixes and minor spelling differences may not be used to negate a finding of identicality or confusing similarity that is otherwise present on the evidence.
The trademark relied on by the Complainant is a common law trademark. If proven, unregistered trademarks are sufficient to establish trademark rights for the purposes of a UDRP claim. The Overview of WIPO Panel Views on Selected UDRP Questions (“the Overview”) expresses that principle as follows:
“1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
It is not enough merely to assert a common law trademark. Rather, it must be proved. The Panel finds that the Complainant has made out its case in this regard, as it has shown by evidence adduced in the Complaint that ABOVE ALL ADVERTISING is the mark under which it promotes its goods and services, that the ABOVE ALL ADVERTISING mark has been widely used in the Complainant’s advertising and in its promotions at tradeshows, in trade journals and in direct marketing, and that the mark has come to be associated in industry and commerce exclusively with the Complainant. The expression is therefore a distinctive identifier associated with the Complainant and its products and has been so associated since the business was started in 2002 by the Complainant’s predecessor in interest, Above All Advertising LLC.
Accordingly, the Complainant has established a common law trademark and the domain name is identical to that trademark, in which the Complainant has rights. The Complainant has therefore established the first of the three elements that it must make out.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until July 1, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is well established, as it is put in the Overview, that “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not made any attempt to rebut this prima facie case, and the Panel concludes that the Respondent has no such rights or legitimate interests in the domain name.
The fact that the Respondent chose as its domain name the precise name of the Complainant, reflecting as it does a unique business in which the Complainant is the only provider recognized by that name, calls for an explanation, for it implies that the domain name will lead to the Complainant’s official website. The Respondent could have given its explanation for this if there were one, but it has not done so. In the absence of such an explanation by the Respondent, the Panel will assume that “any evidence of the Respondent would not have been in [its] favour”. Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.
Accordingly, the Panel concludes that the Respondent has no right or legitimate interest in the domain name and the Complainant has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain names was registered in bad faith and that it is being used in bad faith. See, e.g., Telstra Corporation Limitedv. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location”.
The Panel finds that the Complainant has made out a case under paragraph 4(b)(iv) of the Policy and that the Respondent’s actions constitute bad faith in both registration and use within the meaning of that paragraph. The reasons why that case has been made out are as follows.
First, by registering and using the domain name, the Respondent has undoubtedly been attempting to attract Internet users to its website and the other sites to which it is linked. Looking at the website, it is difficult to accept that this was done for any reason other than commercial gain.
Secondly, by using the Complainant’s trademark ABOVE ALL ADVERTISING in the domain name, the Respondent created a likelihood of confusion with that mark. That is so because using the Complainant’s name and trademark to sell rival brands of the same products as those sold by the Complainant is clearly an attempt to confuse the former goods with the latter.
Thirdly, the confusion that, in particular, is likely to be created is confusion with the ABOVE ALL ADVERTISING mark about the affiliation of various products for sale on the Respondent’s website and its links and as to whether they are the Complainant’s products, endorsed by it or in some way associated with the Complainant.
Clearly, consumers who are using the disputed domain name will have arrived at the website because they are seeking specific goods that they know are provided by the Complainant, namely advertising products and, in particular, inflatable signs and replicas, helium blimps, pop-up tents and giant inflatable products which are major products of the Complainant. When consumers see products of the same type being promoted on a website, in particular the various inflatable products just referred to, they will in all probability assume that those goods are being promoted or provided with the imprimatur of the Complainant, which is not the case.
Indeed, it would appear that none of the products being promoted on the Respondent’s website are provided by the Complainant; instead, they appear to be from suppliers other than the Complainant. It must therefore be concluded that the Respondent has deliberately contrived to use the Complainant’s trademark in its domain name to divert trade away from the Complainant and towards its competitors.
The Panel therefore finds that, within the meaning of paragraph 4(b)(iv) of the Policy, these circumstances create confusion with the Complainant’s trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services that are promoted on it and that the Respondent must be taken to have intended this confusion and to have been doing so for commercial gain.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts; see for example, Pacific Telsis Group v. E. Smith d/b/a/ The Ripe One, WIPO Case No.D2001-1053 and Costco Wholesale Membership, Costco Wholesale Corporation v. Yong Li, WIPO Case No.D2004- 0296; and also Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; MathForum.co v. Weiguang Huang, WIPO Case No. D2000-0743. There are many other UDRP decisions to the same effect.
In the present case, this conclusion is re-enforced by evidence, that has not been denied or rebutted, to the effect that the Respondent and its associates are serial offenders in the registration of domain names which infringe the trademark rights of others and have attempted to conceal their identities.
For these reasons, the Panel finds that the Respondent both registered and used the domain name in bad faith and that the Complainant has therefore made out the third of the three elements that it must prove.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <abovealladvertising.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC Sole Panelist
Dated: July 18, 2007
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