WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New Chapter Inc. v. Caribbean Online International Ltd.
Case No. D2006-1251
1. The Parties
The Complainant is New Chapter Inc., Brattleboro, Vermont, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Caribbean Online International Ltd., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September�27,�2006. On September�29,�2006, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On October�3,�2006, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October�7,�2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October�9,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�29,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�1,�2006.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on November�22,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph�7.
4. Factual Background
Based in the United States, the Complainant manufactures and sells vitamins, food and various nutritional supplements under the NEW CHAPTER mark. The products are sold in hundreds of retail outlets and online. Since May 2005 it has sold wares under the trademark NEW CHAPTER ORGANICS. Both marks are registered at the United States Patent and Trademark Office (USPTO). The Respondent registered the domain name in October�2005. It resolves to a website offering links to various companies selling goods similar to those produced by the Complainant, including many of its direct competitors.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name is identical to its NEW CHAPTER ORGANICS mark and/or confusingly similar to its NEW CHAPTER marks.
The Respondent has no right or legitimate interest in the domain name. It is using the domain name to divert internet users seeking the Complainant’s goods and thus is not making a bona fide offering. The Respondent is not associated with or authorized by the Complainant. The Respondent was not and is not commonly known as “New Chapter Organics”. There is no legitimate noncommercial use being made of the domain name.
The use of the domain name to divert internet users for commercial gain constitutes bad faith registration and use under the Policy. The Respondent’s conduct is also designed to harm and disrupt the Complainant’s business.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
1. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the Complainant has provided the Panel with instances of registrations at the USPTO of marks including NEW CHAPTER and NEW CHAPTER ORGANICS. Although this is not a necessary finding under the first element, use of both marks predates registration of the domain name. The Panel finds that the Complainant has rights in the above-mentioned marks.
As to the second question, the Panel finds that the domain name is identical to the NEW CHPATER ORGANICS mark and confusingly similar to the Complainant’s NEW CHAPTER marks. The disputed domain name incorporates the Complainant’s mark NEW CHAPTER ORGANICS, adding only the top-level “.com.” The addition of the generic top-level domain (gTLD) reference .com, which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO case No. D 2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Soci�t� G�n�rale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.
2. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use and registration of the above-mentioned marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain with a view to unduly profiting from the goodwill flowing from the Complainant’s marks.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.
The Respondent did not choose to register the domain name by accident. It simply misappropriated a domain name and used it to attract Internet users to offer them links to goods that compete with the Complainant’s, presumably for commercial gain (as click-through fees, advertising or otherwise). Given the use of the domain name made by the Respondent, such conduct falls within the type of bad faith registration and use contemplated by paragraph 4(b)(iv). In addition, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or tarnishing the Complainant’s marks.
The Panel finds for the Complainant on this third element of the test.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Daniel J. Gervais
Sole Panelist
Date: December 6, 2006
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