Smith & Fong Company, Inc. v. Vasant
Patel
Claim
Number: FA0506000503054
Complainant, Smith & Fong Company, Inc. (“Complainant”),
is represented by Omid A. Mantashi, 360 Grand Avenue, Ste. 90, Oakland,
CA 94610. Respondent is Vasant Patel (“Respondent”), 004, B-31,
Sector-10, Shanti Nagar, Mira Road East, Thane, Maharashtra 401107, IN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <plybooindia.com>, registered with Network
Solutions, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 27, 2005.
On
June 24, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <plybooindia.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
June 29, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 19,
2005 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@plybooindia.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <plybooindia.com>
domain name is confusingly similar to Complainant’s PLYBOO mark.
2. Respondent does not have any rights or
legitimate interests in the <plybooindia.com> domain name.
3. Respondent registered and used the <plybooindia.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Smith & Fong Company, Inc., registered the PLYBOO mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,345,257 issued May 2,
2000). Complainant has been using the
PLYBOO mark in interstate commerce since 1994 and has expended considerable
sums to develop and promote PLYBOO as a brand of bamboo laminate flooring and
plywood made of bamboo. A key part of
Complainant’s sales and promotion strategy is providing information to
consumers and enabling them to order products via its websites located at <plyboo.com>,
<plyboo-america.com>, and <plyboostrand.com>. Complainant first began using
<plyboo.com> for soliciting sales and disseminating information in
November 1996.
Respondent
registered the <plybooindia.com> domain name on February 21,
2004. Respondent is using the website
for profit by selling competing products that are not manufactured 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.
Complainant’s
registration for its PLYBOO mark with the USPTO is sufficient to establish a prima
facie case of rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Because
Respondent failed to submit a response, Complainant’s presumption of rights is
undisputed. 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. Respondent has the burden
of refuting this assumption.”). Thus,
the Panel finds that Complainant has established rights for purposes of Policy
¶ 4(a)(i).
Complainant
argues that Respondent’s <plybooindia.com> domain name is
confusingly similar to its PLYBOO mark.
The disputed domain name incorporates Complainant’s mark in its entirety
and adds the geographically descriptive word “India.” The Panel holds that the addition of a geographical term to
Complainant’s mark is not sufficient to distinguish the disputed domain name
from the mark. See VeriSign, Inc. v.
Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity
between the complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word
“India” to the complainant’s mark); see also InfoSpace, Inc. v. domains Asia
Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may
believe that the website located at the <dogpileuk.com> domain name is
run by a United Kingdom branch or affiliate of Complainant. . . . Consequently,
the Panel finds that the geographic identifier “uk” does not significantly
distinguish Respondent’s domain name from Complainant’s mark under Policy ¶
4(a)(ii).”). Thus, the Panel concludes
that the <plybooindia.com> domain name is confusingly similar to
Complainant’s mark.
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<plybooindia.com> domain name.
Such an assertion establishes a prima facie case and shifts the
burden to Respondent to demonstrate that it does have rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by the complainant that the respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
argued that Respondent is using the disputed domain name to sell products in
direct competition with Complainant.
Because Respondent did not submit a response, the Panel must accept
Complainant’s description of Respondent’s website as accurate. 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 assertions in this regard.”).
The Panel holds that selling products in direct competition with
Complainant is neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the name”); see
also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum
Nov. 20, 2003) (finding that the respondent used a domain name for commercial
benefit by diverting Internet users to a website that sold goods and services
similar to those offered by the complainant and, thus, was not using the name
in connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use).
Therefore, the Panel concludes that Respondent does not have rights or
legitimate interests in the domain name pursuant to Policy ¶ (4)(c)(i) or
(iii).
Complainant
further argues that Respondent, who is an individual rather than a corporation,
is not commonly known by the disputed domain name. In fact, Respondent’s WHOIS information indicates that Respondent
is known as “Vasant Patel.” See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Because Respondent failed to submit a response, the Panel accepts
Complainant’s allegations and evidence that Respondent is not commonly known by
the disputed domain name. See
Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004)
(finding that because Respondent failed to submit a Response, “Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence”). The Panel concludes
that because Respondent is not commonly known by the disputed domain name, it
has not established rights or legitimate interests under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee 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 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).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent registered and is using the <plybooindia.com>
domain name in bad faith because Respondent’s website offers infringing goods
that compete with Complainant’s. The
Panel holds that capitalizing on Complainant’s mark to offer competing goods in
an effort to harm Complainant’s business constitutes bad faith use and
registration pursuant to Policy ¶ 4(b)(iii).
See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that
the respondent registered a domain name primarily to disrupt its competitor
when it sold similar goods as those offered by the complainant and “even
included Complainant's personal name on the website, leaving Internet users
with the assumption that it was Complainant's business they were doing business
with”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
Respondent is
using the confusingly similar <plybooindia.com> domain name to
divert Internet users to Respondent’s commercial website in competition with
Complainant. Furthermore, Respondent
is unfairly and opportunistically benefiting from the goodwill associated with
Complainant’s PLYBOO mark to profit from imitation products not manufactured by
Complainant. Thus, the Panel finds that
Respondent’s practice of diversion to create a likelihood of confusion for
commercial gain is evidence of bad faith use and registration pursuant to
Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering
the <fossilwatch.com> domain name and using it to sell various watch
brands where Respondent was not authorized to sell Complainant’s goods); see
also 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 Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that
Respondent had engaged in bad faith use and registration by linking the domain
name to a website that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s marks).
The Panel finds
that Complainant satisfied 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 <plybooindia.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson. Jr., Panelist
Dated:
August 4, 2005
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