Domain name - U.S. Trademark - Confusingly similar - Identical - Bad faith registration - Bad faith use - Likelihood of confusion - Use by competitor to divert customers to own website - Lapsed trademark registrations and pending application invest applicant with rights in mark - Respondent in default.

Complainant is involved in promotional sales and services and has been since 1915.  Complainant had held trademarks is the name Walter W. Cribbins.  The trademark registration lapsed due to an administrative error.  Complainant now has a pending application.  Respondent registered the domain name waltercribbins.com.  Respondent is a direct competitor of Complainant. 

Held, Name Transferred to Complainant.

The domain name is confusingly similar to the mark of Complainant.  The domain name is made up of the two dominant words in the mark.  The pending application following the registration lapse invests Complainant with rights in the mark.  Complainant therefore has rights in the mark.

Respondent has no rights or legitimate interests in the domain name.  Respondent is in default.  Since there is no Response, the Panel can accept as true all the allegations made by Complainant.  Respondent has failed to show that it has any rights or legitimate interests in the domain name.

Respondent has shown bad faith registration and use.  The domain name is being used to divert customers to Respondent's site.  Respondent is a direct competitor of Complainant.  The domain name was registered for the purpose of disrupting Complainant's business.  This is bad faith.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Panel decisions referred to

America Online, Inc. v. iDomainNames.com, ICANN Case FA 93766 (Nat. Arb. Forum).
Fossil Inc. v. NAS, ICANN Case FA 92525 (Nat. Arb. Forum).
State Farm v. Try Harder & Co., ICANN Case FA 94730 (Nat. Arb. Forum).
Talk City, Inc. v. Robertson, ICANN Case D2000-0009 (WIPO).
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Buchele, Panelist: -

PARTIES

The Complainant is Walter W. Cribbins Company Inc., Seattle, WA, USA ("Complainant"). The Respondent is Providence Communications, Inc., Modesto, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "WALTERCRIBBINS.COM, registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist James P. Buchele certifies that he 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/07/2000; The Forum received a hard copy of the Complaint on 08/07/2000.

On 08/11/2000, NSI confirmed by e-mail to The Forum that the domain name "WALTERCRIBBINS.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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

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 Respondentís registration as technical, administrative and billing contacts, and to [email protected] by e-mail.

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, September 8, 2000 pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed James P. Buchele as Panelist.

Having reviewed the communications records, 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES CONTENTIONS

A. Complainant

The Complainant contends that the Respondent is infringing on the Complainantís trademark by using the domain name to direct customers to the Respondentís website, <promonium.com>.

B. Respondent

The Respondent failed to submit a response in this matter.

FINDINGS

Because Respondent has failed to submit a response to the Complaint based on the Policy, the Panel accepts as true all allegations set forth in the Complaint. ICANN Rule 14(b). See 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").

The Complainant has been in the business of promotional sales and services since 1915. The Complainant had held trademarks of the name Walter W. Cribbins and the corresponding logo; however, due to an administrative error, the trademark registrations lapsed. The Complainant now has a pending trademark application, based on prior use, for the mark "Walter W. Cribbins Co." (No 76/085611) and its logo (No. 76/085610).

The Complainant has rights in its pending trademark application. The Respondent is infringing on the Complainantís trademark application by using the domain name to direct customers to the Respondentís website, <promonium.com>. The Respondent is a direct competitor of the Complainant.

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 cancelled 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 has rights in the mark "Walter W. Cribbins Co." The Respondentís domain name is composed of the dominant terms of the Complainantís mark, the words "Walter" and "Cribbins". Therefore, the Panel concludes that the domain name is confusingly similar to the Complainantís mark. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (finding that Respondentís domain name <go2AOL.com> was confusingly similar to Complainantís mark AOL); State Farm v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainantís mark "State Farm").

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name. The Respondent has failed to deny this assertion.

The name Walter Cribbins in no way relates to either promonium.com or the Respondentís company. Therefore, the Panel concludes that the Respondent is not commonly known by the domain name. Policy  4.c. (ii).

The Respondent is using the domain name to divert customers to its website. This is not evidence of a bona fide offering of goods or services or a legitimate noncommercial use. Policy 4.c. (i), (iii).

Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

The Complainant contends that the Respondent has registered and used the domain name in bad faith. The Respondent has failed to deny this assertion.

The Respondent is a direct competitor of the Complainant. The Respondent has registered the domain name for the purpose of disrupting the business of a competitor. Policy  4.b. (iii). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).

The Respondent is using the domain name in question to steer Internet users to its site, <promonium.com>. Registering a domain name to attract Internet users to a website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, endorsement, or affiliation of its website. Policy  4.b. (iv). See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 21, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainantís business).

Based on the above, the Panel concludes that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "WALTERCRIBBINS.COM", be transferred from the Respondent to the Complainant.
 
  Dated: September 14, 2000
James P. Buchele, Panelist