UV Sales, Inc. v. Adam Kishanov
Claim Number: FA0511000603207
Complainant is UV Sales, Inc. (“Complainant”), represented by Deborah A. Wilcox, of Baker & Hostetler, LLP, 3200 National City Center, 1900 East 9th Street, Cleveland, OH, 44114. Respondent is Adam Kishanov (“Respondent”), 1669 Penny Lane, Bartlett, IL 60103.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <uv3sunglasses.com>, registered with Go Daddy Software, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 5, 2005.
On November 29, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <uv3sunglasses.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 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@uv3sunglasses.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <uv3sunglasses.com> domain name is confusingly similar to Complainant’s UV3 mark.
2. Respondent does not have any rights or legitimate interests in the <uv3sunglasses.com> domain name.
3. Respondent registered and used the <uv3sunglasses.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, UV Sales, Inc., has used the UV3 mark in connection with sunglasses since May 1, 1999. Complainant registered the UV3 mark with the U.S. Patent and Trademark Office (USPTO) on July 11, 2000 (Reg. No. 2,366,210). Complainant asserts that over ten million pairs of UV3 brand sunglasses have been sold in the United States since 2001.
Respondent, Adam Kishanov, registered the <uv3sunglasses.com> domain name on January 24, 2005. The website associated with the <uv3sunglasses.com> domain name refers Internet traffic to the <sunraesunglasses.com> domain name, a sales site for the SunRae Sunglasses company that offers “quality eyewear at the $10 to $59 price range.”
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 asserts its USPTO registration to demonstrate
its rights in the UV3 mark. The Panel
accepts Complainant’s registration to establish Complainant’s rights in the UV3
mark pursuant to Policy ¶ 4(a)(iii). 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.”); 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.”).
The Panel finds that the <uv3sunglasses.com>
domain name is confusingly similar to Complainant’s UV3 mark because the only
difference is the addition of the word “sunglasses,” which does not
significantly distinguish the domain name from the mark. See Space Imaging
LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb.
Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
The Panel finds that Complainant has fulfilled Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s mark in the <uv3sunglasses.com>
domain name to refer Internet traffic to the SunRae Sunglasses company
website. The Panel finds that
appropriating another’s mark to sell a competitor’s goods is neither a bona
fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor 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.”); Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of goods and services because Respondent is
using a mark confusingly similar to the Complainant's to sell competing
goods.”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain name pursuant to 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); 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).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark in a
confusingly similar domain name to refer Internet traffic to Complainant’s
competitor. The Panel finds that
appropriating another’s mark to refer Internet traffic to a competitor’s
website is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See 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); Gen. Media
Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of the complainant registered and used a
domain name confusingly similar to the complainant’s PENTHOUSE mark to host a
pornographic web site).
The Panel finds that Complainant has established 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 <uv3sunglasses.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 16, 2006
National
Arbitration Forum