WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION World Fishing Network Ltd. v. Forsyte Corporation Case No. D2010-0407 1. The Parties
The Complainant is World Fishing Network Ltd. of Toronto, Ontario, Canada represented internally.
The Respondent is Forsyte Corporation of Nassau, the Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with EntertheD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2010. On March 17, 2010, the Center transmitted by email to EntertheD, Inc a request for registrar verification in connection with the Disputed Domain Name. On March 17, 2010, EntertheD, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on April 20, 2010. 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
The Complainant is the owner of United States of America Federal Trademark registration No. 3,631,421 (WORLD FISHING NETWORK), Canadian Trade-mark registration No. TMA709675 (WORLD FISHING NETWORK), CTM Trade-mark registration No. 6461636 (WORLD FISHING NETWORK) and other trademark registrations pertaining to the mark (collectively referred to as the “WORLD FISHING NETWORK Mark”). The Complainant uses the WORLD FISHING NETWORK Mark in conjunction with, among other things, the operation of a television network and website.
The Disputed Domain Name was first registered by the Respondent in May 2006. 5. Parties' Contentions A. Complainant
The Complainant alleges that it is the owner of numerous registrations for the WORLD FISHING NETWORK Mark. The Complainant further alleges that the Disputed Domain Name is effectively identical to the WORLD FISHING NETWORK Mark in which the Complainant has rights.
The Complainant alleges that the Respondent is not commonly known by the Disputed Domain Name, has no permission from the Complainant to use the Complainant's trademarks and has no legitimate interest in the Disputed Domain Name. The Complainant further alleges that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name.
The Complainant asserts that the Respondent is attempting to exploit the reputation of the WORLD FISHING NETWORK Mark by using an identical domain name to attract Internet users to third-party websites for commercial gain. The Complainant continues that the Respondent has acquired and has been using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion among the Internet users with the WORLD FISHING NETWORK Mark.
The Disputed Domain Name was first registered by the Respondent in May 2006 only a few months after the Complainant applied to register the WORLD FISHING NETWORK Mark in Canada. The Complainant asserts that the Respondent was aware, or at the very least ought to have been aware, of the Complainant's use of the mark when the Disputed Domain Name was registered.
The Respondent has acquired and has been using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion among the Internet users with the Complainant's Mark.
The Respondent is pointing the Disputed Domain Name to pay-per-click-parking-services and has engaged in a pattern of conduct of registering domain names identical or similar to third parties' trademarks and pointing these domain names to pay-per-click-parking-services (see, for example, the following UDRP Decisions: Kathryn Findlay Limited trading as Ushida Findlay Architects v. Forsyte Corporation,WIPO Case No. D2009-0742; Bellbourne House Limited v. Forsyte Corporation,WIPO Case No. D2009-0204; Sinbar v. Forsyte Corporation,WIPO Case No. D2008-1667; Florida Department of Management Service v. Forsyte Corporation,WIPO Case No. D2008-1658; Groupe ROC-ECLERC v. Forsyte Corporation,WIPO Case No. D2008-1506; McKeith Research Ltd v. Forsyte Corporation,WIPO Case No. D2007-1054 and VTECH HOLDING LIMITED v. Forsyte Corporation,WIPO Case No. D2007-1030). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and that respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. 94637; David G. Cook v. This Domain is For Sale, NAF Claim No. 94957 and Gorstew, Jamaica, and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. 94925.
Even though the Respondent has failed to file a Response or to contest the Complainant's assertions, the Panel will review the evidence proffered by the Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. Enforceable Trademark Rights
The Complainant contends that it is the owner of numerous registrations in the United States of America, Canada and other countries throughout the world.
The Complainant's registrations of the WORLD FISHING NETWORK Mark are valid and subsisting, and they serve as prima facie evidence of the Complainant's ownership and the validity of the WORLD FISHING NETWORK Mark.
The Respondent has not contested the allegations of the Complainant. Therefore, the Panel finds that the Complainant has enforceable rights for the purpose of this proceeding. A. Identical or Confusingly Similar
The Complainant asserts that the Disputed Domain Name is effectively identical to the WORLD FISHING NETWORK Mark in which the Complainant has rights.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 2d 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
The Panel notes that the entirety of the WORLD FISHING NETWORK Mark is included in the Disputed Domain Name, with the addition of the gTLD identifier “.net”, which is not distinctive.
Respondent has not contested the assertions by the Complainant that the Disputed Domain Name is confusingly similar to the trademark.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the WORLD FISHING NETWORK Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not commonly known by the Disputed Domain Name, has no permission from the Complainant to use the Complainant's trademarks and has no legitimate interest in the Disputed Domain Name. The Complainant further alleges that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name.
The Respondent is said to make an attempt to exploit the reputation of the Complainant's mark by using an identical domain name to attract Internet users to third-party websites for commercial gain.
The Respondent has acquired and has been using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion among the Internet users with the WORLD FISHING NETWORK Mark.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant comes forward with a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000).
The Complainant has come forward with evidence that the Respondent lacks legitimate interests or rights in the Disputed Domain Name. The Respondent has not contested these assertions.
Therefore, the Panel finds that the Respondent has no right or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant alleges that the Disputed Domain Name was first registered by the Respondent in May 2006 only a few months after the Complainant applied to register the trademark WORLD FISHING NETWORK Mark in Canada. The Complainant further alleges that the Respondent was aware, or at the very least ought to have been aware, of the Complainant's use of the mark when the Disputed Domain Name was registered.
The Complainant asserts that the Respondent has acquired and has been using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion among the Internet users with the WORLD FISHING NETWORK Mark.
As proof of the Respondent's intent, the Complainant charges that the Respondent is pointing the Disputed Domain Name to pay-per-click-parking-services and has engaged in a pattern of conduct of registering domain names identical or similar to third parties' trademarks and pointing these domain names to pay-per-click-parking- services (see, for example, the following WIPO UDRP Decisions: Kathryn Findlay Limited trading as Ushida Findlay Architects v. Forsyte Corporation,WIPO Case No. D2009-0742; Bellbourne House Limited v. Forsyte Corporation,WIPO Case No. D2009-0204; Sinbar v. Forsyte Corporation,WIPO Case No. D2008-1667; Florida Department of Management Service v. Forsyte Corporation,WIPO Case No. D2008-1658; Groupe ROC-ECLERC v. Forsyte Corporation,WIPO Case No. D2008-1506; McKeith Research Ltd v. Forsyte Corporation,WIPO Case No. D2007-1054 and VTECH HOLDING LIMITED v. Forsyte Corporation,WIPO Case No. D2007-1030).
The Complainant alleges that the totality of these activities by the Respondent constitutes bad faith under the Policy paragraph 4(a)(iii).
In this Panel's view, the timing of the Respondent's registration of the Disputed Domain Name provides some evidence of imputed knowledge of the existence of the WORLD FISHING NETWORK Mark. This factual basis supports a finding of bad faith under the Policy paragraph 4(b)(iv).
The Respondent has not contested these assertions by the Complainant. Therefore, the Panel finds that the Complainant has established the elements of the Policy paragraph 4(b)(iv) and the Respondent is found to be in bad faith pursuant to the Policy paragraph 4(a)(iii). 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 Disputed Domain Name be transferred to the Complainant.
Richard W. Page
Sole Panelist
Dated: May 2, 2010
Full & Egal Universal Law Academy