WIPO Domain Name Decision: D2006-0669

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FHG Holdings Pty Ltd d/b/a Click Business Cards v. DOMIBOT

Case No. D2006-0669

1. The Parties

The Complainant is FHG Holdings Pty Ltd d/b/a Click Business Cards, Australia, represented by Armstrong Teasdale, LLP, St. Louis, Missouri, United States of America.

The Respondent is DOMIBOT, Caracas, Venezuela.

2. The Domain Name and Registrar

The disputed domain name <clickbuisnesscards.com> is registered with BelgiumDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2006. On May 31, 2006, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On June 8, 2006, BelgiumDomains, LLC 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”), 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 June 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2006.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on July 18, 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.

The domain name <clickbuisnesscards.com> is registered with the registrar BelgiumDomains, LLC, and it is shown as having been created in February 2006. The Panel verified the records on the Whois database on July 31, 2006, and the latest records revealed the following: (a) The Registrant name and contact details have changed. The new Registrant’s name is Domain Drop S.A. (b) the WHOIS record was last updated on June 27, 2006. This seems to suggest that the Respondent may have transferred the disputed domain name to a new holder during a pending administrative procedure, in breach of Paragraph 8 of the Uniform Domain Name Dispute Resolution Policy. If that is indeed the case, the registrar has the right by virtue of Paragraph 8 of the Policy to cancel this transfer. The Registrar has, in any case, restored the original registrant data on the Whois record at the request of the Center.

4. Factual Background

The Complainant has a domain name registration <clickbusinesscards.com> which was created in 2000. Through this domain name, the Complainant offers Internet users the option of choosing business card templates, which they can adjust to their needs and then place an order with the Complainant, who prints and dispatches the orders.

The Complainant registered the trademark CLICK BUSINESS CARDS in the United States on January 31, 2006 for business cards. The registration shows that first use was in 2000.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has been in the software development and printing industry since 1981. It also contends that it was the first in the world to launch the business of ordering business cards on line, which it did through its domain name <clickbusinesscards.com> since 1996, and that it is the largest supplier of business cards online in Australia and internationally.

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights for the following reasons: (a) The Complainant has registered the trademark CLICK BUSINESS CARDS which it has been using in connection with providing business cards on line, has launched its web site <clickbusinesscards.com>, has been using this trademark in its business since 1996, and has spent considerable effort in promoting this mark, thereby acquiring the trademark’s goodwill, (b) the disputed domain name is identical or nearly identical to the trademark of the Complainant as only the position of the letter “i” has been changed, thus creating a close variant of the trademark and one that is confusingly similar to it; the disputed domain name is likewise confusingly similar to the Complainant’s domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons: (a) the Respondent is not related to the Complainant nor has it obtained its permission to use the trademark concerned, (b) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is typo-squatting and benefitting from the reputation of the Complainant in order to direct Internet traffic to web sites of competitors of the Complainant and obtain a commercial gain from such traffic.

The Complainant contends that the disputed domain name was registered and is being used in bad faith for the following reasons: (a) the Respondent uses a confusingly similar domain name to appropriate the goodwill of the Complainant and direct customers of the Complainant to competitors’ web sites in order to generate revenue thereof, (b) the Respondent has been charged with typo-squatting previously.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel was satisfied that the Complainant has registered the mark CLICK BUSINESS CARDS in the United States. Consequently, the Complainant established that he does have rights in the mark. However, the Panel considered the generic nature of the words constituting the mark. The Panel finds the trademark descriptive and the term “business cards” is generic; actually, the registration of the trademark includes a disclaimer on the words “business cards”. Accordingly, what renders the trademark distinctive or grants the Complainant the rights to use it, is the word CLICK combined with the words BUSINESS CARDS. However, the Panel is unsure whether the addition of the word CLICK renders the trademark distinctive; it could be argued that the trademark remains overall, descriptive and suggestive. The concerned trademark clearly describes the product in question, which is business cards, and adding the word CLICK insinuates that the business cards are somehow linked to computers or the Internet.

In determining this matter, the Panel was guided by previous WIPO Decisions. The Panel referred to eMedicine.com, Inc. v. Noble Scientific, WIPO Case No. D2001-0146 (“the Policy only requires that the Complainant meet the test of showing it has trademark or service mark rights in the disputed domain name. The Complainant’s ownership of a still-valid United States principal registry trademark is sufficient evidence for the Panel under 4a(i) of the Policy”). The Panel also referred to Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629 (“Perhaps by ‘generic’ Respondent intends to suggest that the term SCHOLASTIC is merely descriptive. If so, prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption.”) The Panel concurred with the principles establish in these two cases. Therefore, while this Panel did consider and reflect upon the generic nature of the constituting elements of the Complainant’s mark, the Panel still found that the fact of its registration with the United States Patent and Trademark Office established a sufficient case for validity that was not rebutted by either the Respondent or the facts of the case. Accordingly, the Panel finds that the Complainant has established its rights in the trademark CLICK BUSINESS CARDS for the purpose of this proceeding.

The Panel noted that the Respondent uses the words “click buisness cards” in the disputed domain name, which it considers almost identical to the trademark of the Complainant. Changing the position of the letter “i” by the Respondent does not render the disputed domain name less confusing with the trademark of the Complainant. The Panel concludes that such use confuses the consumer and leads him or her to think that these web sites are owned by the trademark owner, namely, the Complainant.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

The trademark CLICK BUSINESS CARDS is owned by the Complainant as established by the facts of this case. The Respondent is not linked to the Complainant or its business in any manner nor does it act on its behalf. The Complainant contends that it had not given any authorization to the Respondent to use the trademark CLICK BUSINESS CARDS in the disputed domain name.

In accordance with Paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interests in the disputed domain name by proving one of the following elements:

i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

ii) that the Respondent has been commonly known by the domain name; or

iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.

The Respondent did not submit any evidence that establishes its rights or legitimate interests in the disputed domain name based on any of the above scenarios. While failure to respond does not present conclusive evidence against the Respondent, the Panel did consider this factor as further proof of the Respondent’s failure to demonstrate its rights or legitimate interests in the disputed domain name. See Société Air France v. Domain Active Pty. Ltd, WIPO Case No. D2004-0993 (“A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant”).

When examining each of the above elements, the Panel found that there is no offering of any goods or services done by the Respondent in this case. The disputed domain name directs the user to web sites that include links to other web sites. Some of the links offered direct to sites which offer business cards, others direct to sites which include links to various online business resources, one of the links directs to a CD and DVD duplication site, etc. The Respondent has not submitted any proof demonstrating an intent or preparation to use the domain name in connection with a bona fide offering of goods or services.

The Panel does not find any association between the Respondent’s name and the disputed domain name which may indicate that the Respondent has been commonly known by the disputed domain name.

The Panel does not find that the disputed domain name is being used for “legitimate non-commercial or fair use” purposes as the Respondent is using the disputed domain name to direct the public to web sites which contain links to other web sites. The Panel believes that the Respondent, in all likelihood, receives commercial gains from the display of these links.

Based on all of the above factors, the Panel finds no rights or legitimate interests for the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

To establish bad faith of the Respondent, it is enough to show that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the web site.

The Complainant began using its trademark a number of years before the Respondent registered the disputed domain name. The Respondent intended to divert Internet users who are looking for business cards online to its web site. The disputed domain name links to web sites that include links to other web sites. Certain of these web sites offer business cards. The Panel believes that the Respondent is obtaining a financial return from the owners of such web sites through visitors that were diverted from the Complainant’s Internet traffic.

For all of the above considerations, the Panel finds the bad faith of the Respondent in acquiring and using the disputed domain name established.

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, <clickbuisnesscards.com>, be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: August 1, 2006