BC Fax It Limited v. It's The Fax Ltd. a/k/a It's The Fax c/o Ryan Galovich
Claim Number: FA0509000568367
Complainant is BC Fax It Limited (“Complainant”), represented by Stuart Moir, of INC Business Lawyers, 1201-11871 Horseshoe Way, Richmond, BC V7A 5H5, Canada. Respondent is It's The Fax Ltd. a/k/a It's The Fax c/o Ryan Galovich (“Respondent”), 8013 Modesto Drive, Delta, BC V4C 4A9, Canada.
The domain names at issue are <allpointsolutions.com> and <bcfaxit.com>, registered with Tucows Inc. and Enom, Inc., respectively.
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 electronically on September 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2005.
On September 28, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <allpointsolutions.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 5, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bcfaxit.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 the Policy.
On October 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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@allpointsolutions.com and postmaster@bcfaxit.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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 <allpointsolutions.com> domauin name is confusingly similar to Complainant’s ALL POINTS SOLUTIONS mark and Respondent’s <bcfaxit.com> domain name is identical to Complainant’s BC FAX IT mark.
2. Respondent does not have any rights or legitimate interests in the <allpointsolutions.com> and <bcfaxit.com> domain names.
3. Respondent registered and used the <allpointsolutions.com> and <bcfaxit.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BC Fax It Limited, is engaged in the business of offering communication services involving fax broadcasting and e-mail broadcasting, which includes design services and marketing databases and software. Complainant has been conducting business under the BC FAX IT mark since 1996, when it incorporated in the province of British Columbia, Canada. Complainant also adopted and has used the ALL POINTS SOLUTIONS mark in connection with the operation of its business since 2003.
Complainant registered and used the
<allpointssolutions.com> domain name on March 6, 2003 to use in
connection with its business approximately twenty months before Respondent
registered the <allpointsolutions.com> domain name.
Respondent registered the <allpointsolutions.com> domain
name on November 24, 2004 and the <bcfaxit.com> domain name on
November 1, 2004. Respondent is using
the domain name to redirect Internet users to a website promoting various
commercial services, including fax and e-mail services in direct competition
with Complainant. Upon Complainant’s
request to transfer the disputed domain names, Respondent offered to sell the <bcfaxit.com>
domain name registration to Complainant for an amount greater than
Respondent’s out-of-pocket costs directly related to the domain name.
Complainant and Respondent operate their respective businesses in the same metropolitan area.
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 operates a communications
business involving e-mail and fax transmissions. Complainant has used the BC FAX IT mark continuously since as
early as 1996 in connection with its communications business. Complainant also holds a business
registration for the BC FAX IT mark under which it was incorporated in British
Columbia, Canada. Complainant began
using the ALL POINTS SOLUTIONS mark in connection with its services in 2003 and
currently maintains a website at the <allpointssolutions.com> domain
name. The Panel finds that Complainant
has sufficiently established common law rights in the BC FAX IT and ALL POINTS
SOLUTIONS marks. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided
evidence that it had valuable goodwill in the <minorleaguebaseball.com>
domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
The <bcfaxit.com> domain name registered by Respondent is identical to Complainant’s BC FAX IT mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain “.com.” The Panel finds that the addition of the generic top-level domain “.com” does not negate the identical nature of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant)
Respondent’s <allpointsolutions.com> domain
name is confusingly similar to Complainant’s ALL POINTS SOLUTIONS mark because
the domain name incorporates Complainant’s mark and deviates from it only with
the omission of the letter “s” from Complainant’s mark and the addition of the
generic top-level domain “.com.” The
Panel finds that changes are insufficient to distinguish the disputed domain
name from Complainant’s mark. See Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <allpointsolutions.com> and <bcfaxit.com> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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).
Respondent is not commonly known by the <allpointsolutions.com> and <bcfaxit.com> domain names. Rather, Respondent’s registered business name is “It’s The Fax, Ltd.” Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Furthermore, Respondent is using the confusingly similar domain
names to redirect Internet users to Respondent’s competing commercial
website. The Panel finds that such
competing use is not 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 Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide
offering of goods or services).
Moreover, Respondent’s apparent willingness to sell the <bcfaxit.com>
domain name registration is further evidence that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is wholly appropriating Complainant’s marks to divert Complainant’s customers to Respondent’s own competing commercial website at the disputed domain names. The Panel finds that Respondent is intentionally attracting Internet users to its commercial website by taking advantage of the likelihood of confusion between its domain name and Complainant’s mark, and that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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).
Furthermore, Respondent registered the <allpointsolutions.com>
domain name and offered to sell it to Complainant for an amount greater
than Respondent’s out-of-pocket costs directly related to the domain name. The Panel finds that Respondent’s offer to
sell the dispute domain name for profit evidences Respondent’s bad faith
registration and use pursuant to Policy ¶
4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see
also John C. Nordt Co. v. Jewelry Exch., FA 96789 (Nat. Arb. Forum Apr. 11, 2001) (finding that the respondent
exhibited bad faith when the respondent, a competitor of the complainant,
attempted to sell a domain name, which was identical to the complainant’s
MOTHER’S RING mark, to the complainant for a profit).
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 <allpointsolutions.com> and <bcfaxit.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 16, 2005
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