WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Internet Holdings L.L.C. v William Vaughan and River Cruise Investments, Ltd.
Case No. D2008-1031
1. The Parties
The Complainant is American Internet Holdings L.L.C. of New Jersey, United States of America, represented by Florina A. Moldovan of Mcelroy, Deutsch, Mulvaney & Carpenter, LLP, United States of America..
The Respondents are William Vaughan and River Cruise Investments Ltd. of Springfield, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name is registered with Innerwise Inc.d/b/a ITSYOURDOMAIN.COM(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. The Center transmitted its request for domain name verification to the Registrar on July 9, 2008. The Registrar replied on the same date confirming that it had received a copy of the Complaint and that it was the Registrar of the domain name. On July 17, 2008 and in accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint. No Response was received from the Respondent. On August 8, 2008 notification of the Respondent’s default was served on the Respondent.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 25, 2008. 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
The Complainant is in the business of selling online retail store services for ink, toner and similar products. At Annex 9 to the Complaint is reproduced an extract from the Complainant’s website under the registered trade mark “The Supplies Guys”. The logo refers to the Complainant as “your discount source for toner and ink cartridge supplies”.
It appears that the Complainant first used the mark “The Supplies Guys” on April 20, 1999 as is shown by the application for registration of the mark which is exhibited at Annex 8.
At Annexes 6 and 7 are exhibited a copy of a certificate of registration for United States trade mark number 3300975, THE SUPPLIES GUYS for “online retail store and retail store services featuring computer printer products, namely, ink and toner, ink and toner cartridges, developers, imaging cartridges, ribbon charges, sheet feeders, maintenance and cleaning kits, drum kits, transfer belts and rollers, fuser and imaging units and waste toner boxes and bottles”. At Annex 7 is an assignment of the Complainant’s change of name.
There is evidence that the Complainant is using the mark for the services featuring products identified in the classification of goods contained in the certificate of trade mark registration. This is shown by the website print out at Annex 9.
There is no evidence from the Respondents. The Respondents having failed to serve a Response the Panel accepts the evidence adduced by the Complainant as true.
5. Parties’ Contentions
A. Complainant
The Complainant contends:-
i. The domain name is identical or confusingly similar to the Complainant’s mark “The Supplies Guys”;
ii. The Respondents have no rights or legitimate interests in respect of the domain name;
iii. The domain name is registered and is being used in bad faith, the Complainant seeks transfer of the Domain Name.
B Respondent
In the absence of a Response there are no submissions by the Respondents.
6. Discussion and Findings
A. Identical or Confusingly Similar
In accordance with the Policy paragraph 4(a) to succeed in this proceeding, the Complainant must prove:
(i) that the domain name is identical or confusingly similar to a trade mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii.) that the domain name was registered and is being used in bad faith.
The Panel proceeds to consider each of these elements in turn.
On the basis of the evidence adduced by the Complainant the Panel accepts that the Complainant has trade mark rights in the mark THE SUPPLIES GUY.
The Complainant submits that the domain name is identical to the registered trade mark THE SUPPLIES GUYS. The addition of the top level domain reference “.com” suffix to the registered mark that does not detract from that submission. The Panel accepts this submission and accordingly finds that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name. It points out that the Complainant is the owner of US trade mark registration no. 3300975 and that mark has been in continuous use in commerce since as early as April 20, 1999.
The Complainant points out that there is no evidence indicating the Respondents’ use of the domain name with regard to a bona fide offering of goods and services nor that the Respondents individually or as a business have been commonly known by a domain name. It appears that the Complainant has made Yahoo and Google web searches of the Respondents, William Vaughan, as well as River Cruise Investments Limited which is identified by the Respondent’s information search. No information was forthcoming as to the Respondents’ use of the domain name or any related business.
The Complainant points out that at no time did it license or authorise the Respondents to register or use any domain name that incorporates its mark. This is plain from the Complainant’s Counsel’s email correspondence to the Respondents demanding cessation of infringement of the mark and transfer of the domain name, dated March 28, 2008. Copies of the correspondence is exhibited at Annexes 24 and 25.
In these circumstances and taking into account there is no evidence to the contrary from the Respondents the Panel accepts that the Respondents have no legitimate interest in the domain name.
The Panel therefore considers that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
In support of the Complainant’s contentions as to bad faith the Complainant submits that the Respondents have intentionally and in bad faith attempted to attract for commercial gain, Internet users to the website identified with the domain name to divert them to other websites providing similar products and thereby creating a likelihood of confusion with the Complainant’s mark.
The Respondents’ domain name when accessed connects the user with links to several competitors of the Complainant that sell ink cartridges, printer cartridges and printers i.e. the same products offered by the Complainant. The Complainant submits that it is therefore reasonable to infer that when a user accesses a competitor site the Respondent receives compensation in violation of the Policy. It submits the only reasonable inference to be drawn from this is that it is intended to confuse, deceive and direct Internet users looking for the Complainant’s website.
The Complainant also relies upon a presumption of the Respondents’ infringing conduct in diverting business to the Complainant’s competitors following its failure to respond to the Complainant’s March 28, 2008 cease and desist letter (Annex 24). It submits that this is further evidence of bad faith.
The Panel in the absence of any evidence to the contrary from the Respondent accepts the Complainant’s factual submissions going to bad faith.
The Panel therefore concludes that the third requirement of the Policy is satisfied.
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 from the Respondents.
Clive Duncan Thorne
Sole Panelist
Dated: September 8, 2008
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