Interactive Gallery, Inc. v. d communications
[Indexed as: Interactive Gallery, Inc.]
[Indexed as: CAFE-FLESH.COM]
National Arbitration Forum
Administrative Panel Decision
Claim No.: FA0004000094673
Commenced: 19 May 2000
Judgement: 27 June 2000
Presiding Panelist: John A. Bender
Domain Name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - No legitimate interest - Misleading & intentionally diverting business.
Complainant is owner of registered trademark, CAFÉ FLESH, and uses the domain name, CAFÉFLESH.COM, for its website. Respondent registered the domain name, CAFE-FLESH.COM.
Held, Name Transferred to Complainant
Respondent has submitted no response, permitting the inference that the use of the Complainant's mark in connection with the Respondent's website is confusingly similar. Respondent's failure to respond leads one to believe that Respondent knows its website is misleading and intentionally diverts business from Complainant.
Respondent's domain name is identical to Complainant's registered mark with a difference so minute that it's likely to cause consumer confusion between the websites.
Respondent has made no legitimate use of the domain name. Respondent hasn't used it with a bona fide offering of goods and services, nor is the respondent commonly known by the domain name. Respondent used the site to divert consumers to its competing services.
Registering a domain name primarily for the purpose of disrupting the business of a competitor or for attracting internet users to another site by creating confusion is evidence of bad faith. Respondent should have had knowledge of Complainant's prior adoption, usage and registration of the mark.
Policies referred to
ICANN Uniform Domain Name Dispute Policy
Registration Agreements referred to
Network Solutions Service Agreement Version 4.0
Panel Decisions referred to
Hewlett Packard Company v. Full System, FA94637 (Nat.Arb.Forum May 22, 2000)
America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA93679 (Nat.Arb.Forum March 16,2000)
America Online, Inc. v. QTR Corp., FA92016 (Nat.Arb.Forum May 4, 2000)
Cases referred to
Bender John, A., Panelist: -
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "CAFE-FLESH.COM", registered with Network Solutions, Inc. ("NSI").
John A. Bender, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 04/28/2000; The Forum received a hard copy of the Complaint 04/28/2000.
On 05/04/2000, NSI confirmed by e-mail to The Forum that the domain name "CAFE-FLESH.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.
On 05/19/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/12/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email.
On 06/12/2000, 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 June 22, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed John A. Bender as Panelist(s).
Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant contends that the Respondent has registered a domain name that is identical to and confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.
The Respondent submitted no response in this matter.
The Complainant is the owner of the registered trademark CAFÉ FLESH (filed 08/26/1996; registered 06/09/1998; No. 2,164,585). The Complainant uses the domain name "CAFEFLESH.COM" for its website. The Complainant has invested substantial sums of money in developing and marketing its service under its registered mark.
The Respondent registered the domain name, "CAFE-FLESH.COM" on February 7, 1998. On the registrar WHOIS page, the Respondent provided incomplete information by not listing a contact telephone number or fax number. The Respondent used this website to direct consumers to its competing services (On 06/22/2000, the Respondent's website could not be found. "The host specified in your URL could not be found." See www.cafe-flesh.com.)
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be cancelled or transferred:
(3) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
The Complainant has offered exhibits in support of its claims, whereas the Respondent has submitted no response in the matter. The Respondent's failure to dispute the allegations of the Complainant permits the inference that the use of the Complaint's mark in connection with the Respondent's website is confusingly similar to the Complainant's mark. Further, the Respondent's failure to respond leads one to believe that the Respondent's knows their web site is misleading and intentionally diverting business from the Complainant. See Hewlett-Packard Company v. Full System, FA 94637, (Nat. Arb. Forum May 22, 2000). Applying the Policy to the issue in this case furthers these inferences.
Identical and/or Confusingly Similar
The Respondent's domain name is identical to the Complainant's registered mark except for the addition of a hyphen between the words "café" and "flesh". This difference is so minute that it is likely to cause consumer confusion between the two websites.
Rights or Legitimate Interests
The Respondent has made no legitimate use of the domain name at issue. The Respondent has not used the domain name in connection with a bona fide offering of goods and services nor is the Respondent commonly known by the domain name, as set forth in the Policy 4café(i) - (iii). Instead, the Respondent is using the site to divert users to another site that offers competing services. See America Online, Inc v. Avrasya Yayincilik Danismanlik Ltd, FA 93679 (Nat. Arb. Forum March 16, 2000).
The Respondent registered "CAFE-FLESH.COM" long after the Complainant started using and registered their mark. The Respondent should have had knowledge of the Complainant's prior adoption, usage, and registration of the mark. See America Online, Inc. v. QTR Corp., FA 92016 (Nat. Arb. Forum May 9, 2000). Registering a domain name primarily for the purpose of disrupting the business of a competitor or for attracting Internet users to another site by creating confusion is evidence of bad faith. Policy 4(b)(iii), (iv).
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "CAFE-FLESH.COM" be transferred from the Respondent to the Complainant.
Dated: June 27, 2000 Honorable John A. Bender, Arbitrator
Domain Name Transferred