[Indexed as: AccuWeather, Inc. v. Netchem, Inc.]
[Indexed as: ACCWEATHER.COM and ACCUEATHER.COM]
National Arbitration Forum
Claim Number: FA0008000095401
Commenced: 14 August 2000
Judgment: 19 September 2000
Panel Member: Herman D. Michels
Domain names-Domain Name Resolution Policy-Bad faith-Rights and Legitimate Interests-Identical Confusingly Similar-Judgment for Complainant-Domain Names Transferred-Cease and Desist Order from use of Domain Names-Mark known worldwide.
Complainant is a world leader in the provision of commercial weather information and its federally registered ACCU-WEATHER.COM mark has been well-known worldwide for over twenty years. Complainant has conducted business under the domain name for the last five years and its website is a premier site, providing weather information to the world population via Internet. Complainants service mark has gained worldwide recognition many years before the widespread use of the Internet and registration of Respondents domain names ACCWEATHER.COM and ACCUEATHER.COM. Complainant has the exclusive right to use the ACCU-WEATHER mark.
Held: Domain Name Transferred to Complainant.
Disputed domain names are virtually identical to Complainants mark, therefore the two marks are confusingly similar due to the fact that they are each spelled identically to Complainants mark except for the deletion of one letter. Respondents deletion of the one letter in each domain name was plainly done in an attempt to capture unsuspecting Internet users who misspell "ACCUWEATHER."
Respondent does not have any rights or interests in both the domain names since: (a) Respondent is not a licensee of Complainant; (2) Complainants prior rights in the domain name precede Respondents registration; (3) Respondent is not commonly known by the domain name in question.
Respondent has registered the domain names and is using said names in bad faith. By using the domain names, Respondent intentionally attempted to attract for commercial gain Internet users to Respondents website by creating the likelihood of confusion with Complainants mark as to the source, sponsorship affiliation or endorsement of Respondents website. Therefore, Respondent has registered the domain names primarily for the purpose of disrupting the business of Complainant. Respondents activities constitute an infringement of Complainants rights in its mark and has caused and will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will.
Polices referred to:
ICANN Uniform Domain Name Dispute Policy
Rules of the Uniform Domain Name Dispute Resolution Policy
National Arbitration Forums Supplemental Rules of ICANNs Uniform Domain Resolution Policy
Panel Decisions referred to:
Charles Jourdan Holding AG v. AAIM <http://arbiter.wipo.int/domains/decisions/html/d2000-0403.html>,
D2000-0403 (WIPO June 27, 2000).
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc <http://www.arbforum.com/domains/>.,
FA 94385 (Nat. Arb. Forum July 7, 2000).
Sunglass Hut Corp. v. AAANET, Inc., FA 94370 (Nat. Arb. Forum May 11,
2000).
Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000).
PARTIES
The Complainant is AccuWeather, Inc., State College, PA, USA ("Complainant").
The Respondent is Netchem, Inc., Milltown, NJ, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are "ACCWEATHER.COM" and "ACCUEATHER.COM",
registered with Alabanza dba BulkRegister.com ("Alabanza").
PANELIST(s)
The Panelist 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 the panelist in this proceeding.
Herman D. Michels as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 08/10/2000; The Forum received a hard copy
of the Complaint on 08/11/2000.
On 08/10/2000, Alabanza confirmed by e-mail to The Forum that the domain
names "ACCWEATHER.COM" and "ACCUEATHER.COM" are registered with Alabanza
and that the Respondent is the current registrant of the name.
On 08/14/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 09/05/2000
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 Respondents registration as technical, administrative and billing contacts,
and to [email protected] <mailto:[email protected]>
and [email protected] <mailto:[email protected]> by
e-mail.
On September 11, 2000, pursuant to Complainants request to have the
dispute decided by a Single Member panel, The Forum appointed Herman D.
Michels as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names transferred from the
Respondent to the Complainant.
PARTIES CONTENTIONS
A. Complainant
Complainant contends that it is a world leader in the provision of
commercial weather information and its ACCU-WEATHER mark has been well
known worldwide for over 20 years. Complainant further contends that it
registered and conducted business under the domain name ACCUWEATHER.COM
for the last 5 years and that this site is a premier site, providing weather
information to the world population via the Internet.
Complainant contends that Respondents domain names ACCWEATHER.COM
and ACCUEATHER.COM are confusingly similar to its ACCU-WEATHER service
mark, and that Respondent has no rights or legitimate interests in its
domain names due to the fact that Complainants service mark was federally
registered on December 17, 1985 and has gained worldwide recognition for
many years before the widespread use of the Internet and registration of
Respondents domain names.
Complainant further contends that Respondents registration and use
of these domain names is a bad faith attempt to capitalize on the worldwide
notoriety of the ACCU-WEATHER mark.
Complainant also contends that the existence of Respondents domain
names ACCWEATHER.COM and ACCUEATHER.COM will create major business concerns
for Complainant due to the fact that these domain names are automatically
pushed to "www.kbids.com." This website is a one-page site that offers
domain names for sale for extremely large sums of money and Complainant
complains that Respondents registration of these domain names is to capture
unsuspecting Internet consumers who mistakenly misspell ACCUWEATHER.
Complainant also contends that Respondent is intentionally attempting
to attract unsuspecting consumers to its website for commercial gain by
using the worldwide name recognition of ACCU-WEATHER mark and that consumers
searching for weather information will not be able to determine that Respondents
domain names are not owned by or affiliated in any way with Complainant.
Unsuspecting Internet users are directed to Respondents sites and that
such use of the domain names is plainly an infringement upon Complainants
rights in the ACCU-WEATHER mark. Further, Complainant contends that through
Respondents registration and use of the ACCWEATHER.COM and ACCUEATHER.COM
domain names Respondent is illegally trading on Complainants mark and
domain name and is receiving a windfall of Internet traffic.
Finally, Complainant contends that Respondent is illegally diverting
Internet traffic and resources from its site, causing economic harm to
it and that Respondents actions are in direct violation of the Uniform
Domain Name Resolution Policy adopted by Network Solutions, Inc.
B. Respondent
Respondent contends that it did not know that ACCU-WEATHER is a trademark
when it registered the domain names ACCWEATHER.COM and ACCUEATHER.COM.
It argues that ACCWEATHER.COM is a meaningful name (the "AC" standing for
air conditioning) and that ACCWEATHER.COM is very similar to ACWEATHER.COM.
Since Respondent is the owner of ACWEATHER.COM, it claims that it is entitled
to claim ACCWEATHER.COM.
Respondent further argues that it would like to keep ACWEATHER.COM
and ACCWEATHER.COM and, if necessary, give up ACCUEATHER.COM just to avoid
further complaints.
Finally, Respondent points out that ACCWEATHER.COM and the trademark
ACCU-WEATHER.COM are different by six letters, and if ACCWEATHER.COM could
be taken from it, this would set an unusual precedent and create huge confusion
for the free world.
FINDINGS
Complainant is a world leader in the provision of commercial weather
information and its ACCU-WEATHER mark has been well-known worldwide for
over twenty years. Complainant has registered and conducted business under
the domain name ACCUWEATHER.COM for the last five years and that its website
is a premier site, providing weather information to the world population
via Internet. Additionally, Complainants servicemark ACCU-WEATHER was
federally registered on December 17, 1985 and has gained worldwide recognition
many years before the widespread use of the Internet and registration of
Respondents domain names ACCWEATHER.COM and ACCUEATHER.COM. Complainant
has the exclusive right to use the ACCU-WEATHER mark.
The domain names ACCWEATHER.COM and ACCUEATHER.COM registered by Respondent
are confusingly similar to Complainants mark ACCU-WEATHER due to the fact
that they are each spelled identically to Complainants mark except for
the deletion of one letter. Respondents deletion of the one letter in
each domain name was plainly done in an attempt to capture unsuspecting
Internet users who misspell "ACCUWEATHER." Respondent does not have any
rights or interests in the domain names ACCU-WEATHER.COM and ACCUEATHER.COM.
Respondent has registered the domain names ACCWEATHER.COM and ACCUEATHER.COM
and is using said names in bad faith. By using the domain names ACCUWEATHER.COM
and ACCUEATHER.COM, Respondent intentionally attempted to attract for commercial
gain Internet users to Respondents website by creating the likelihood
of confusion with Complainants mark ACCU-WEATHER as to the source, sponsorship
affiliation or endorsement of Respondents website. See R4(b)iv.
Additionally, Respondent registered and used the domain names ACCWEATHER.COM
and ACCUEATHER.COM in bad faith by virtue of the fact that Respondent registered
the domain names primarily for the purpose of disrupting the business of
Complainant. See R4(b)iii.
Respondents activities constitute an infringement of Complainants
rights in its ACCU-WEATHER mark and has caused and will continue to cause
substantial and irreparable harm to Complainant and its business reputation
and good will.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy")
requires that the complainant must prove each of the following three elements
to obtain an order that a domain name should be canceled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(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.
Identical and/or Confusingly Similar
The Complainant contends that the Respondents domain name is confusingly
similar to the Complainants ACCU-WEATHER service mark. The domain names
are spelled identically to the Complainants mark except for the deletion
of one letter. Misspellings or typographical variations of registered marks
cause confusing similarity with the mark. See Sunglass Hut Corp. v. AAANET,
Inc., FA 94370 (Nat. Arb. Forum May 11, 2000) (finding that the domain
name <sunglasshot.com> is confusingly similar to the mark SUNGLASS HUT);
Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the
domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com>
are confusingly similar to Complainants mark "Beanie Babies").
The domain names ACCWEATHER.COM and ACCUEATHER.COM registered by Respondent
are confusingly similar to Complaints ACCU-WEATHER mark which was registered
on December 17, 1985 and in which Complainant has all rights and interests.
Rights or Legitimate Interests
Respondent does not have any substantial rights or legitimate interests
in respect to the domain names ACCWEATHER.COM and ACCUEATHER.COM. See Charles
Jourdan Holding AG v. AAIM <http://arbiter.wipo.int/domains/decisions/html/d2000-0403.html>,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainants
prior rights in the domain name precede Respondents registration; (3)
Respondent is not commonly known by the domain name in question).
Registration and Use in Bad Faith
Respondent registered the domain names ACCWEATHER.com and ACCUEATHER.COM
with the intention of disrupting the business of the Complainant. It did
this by creating a likelihood of confusion with Complainants mark ACCU-WEATHER.
See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc <http://www.arbforum.com/domains/>.,
FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree
of variation from the Complainant's marks suggests that the Respondent,
the Complainants competitor, registered the names primarily for the purpose
of disrupting the Complainant's business).
Respondent has registered and used the domain names ACCWEATHER.COM
and ACCUEATHER.COM in bad faith.
DECISION
Based upon the above findings and conclusions and pursuant to Rule
4(i) of the Rules of the Uniform Domain Name Dispute Resolution Policy
and the National Arbitration Forums Supplemental Rules of ICANNs Uniform
Domain Resolution Policy, I hereby order that 1) the domain names ACCWEATHER.COM
and ACCUEATHER.COM registered by Respondent Netchem, Inc. be transferred
forthwith to Complainant AccuWeather, Inc. and 2) Respondent Netchem, Inc.
shall cease and desist from any and all use of the domain names ACCWEATHER.COM
and ACCUEATHER.COM.
Herman D. Michels
Dated: September 19, 2000
Domain Name Transferred