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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Network for Instructional TV, Inc. v. Goals Marketing, Inc.

Case No. D2007-0311

 

1. The Parties

The Complainant is Network for Instructional TV, Inc., Reston, Virginia, United States of America, represented by Dow Lohnes, PLLC, United States of America.

The Respondent is Goals Marketing, Inc., Oceanside, California, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <teachers1st.com> (the “Domain Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2007. On March 5, 2007, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Name at issue. On March 5, 2007, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for Respondent. 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 Respondent of the Complaint, and the proceedings commenced on March 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 30, 2007.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 10, 2007. 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

Complainant states that it is a not-for-profit corporation that creates and distributes technology-based educational materials, services and instruction to educators in the United States of America and internationally. Complainant states that it promotes its education technology products and services through conventional advertising and also nationally and internationally via its website at “www.nitv.org”.

Complainant states that since March 9, 1998, it has offered online educational lesson plans and educational resources to teachers of grade school children under the name and mark TEACHERS FIRST (the “TEACHERS FIRST Trademark”). Complainant owns an active United States trademark registration for the TEACHERS FIRST Trademark (U.S. Reg. No. 2,271,783), which was registered on August 24, 1999. (Complainant provided a copy of a trademark registration certificate for United States Reg. No. 2,271,783.) Complainant is the registrant of the domain name <teachersfirst.com>, which was registered on February 27, 1998.

Respondent is the registrant of the Domain Name <teachers1st.com>, which was registered on May 6, 2005.

 

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- “Prior to December 21, 2006, the Domain Name resolved to a website prominently branded ‘TEACHERS 1ST’ that offered cookware, cutlery and other products for sale, and solicited educators of school children to participate in a 10-minute presentation on nutrition in combination with an alleged sweepstakes giveaway.”

- “In December 2006, Complainant was contacted by several teachers who had reportedly attended Respondent’s nutrition presentations and mistakenly believed that they were contacting Respondent. In addition, Complainant received a message from another teacher who contacted Complainant to complain that an order for cookware she placed with Respondent in September 2006 had never been fulfilled. Complainant traced the source of these instances of consumer confusion to Respondent’s website, at which time Complainant became aware of Respondent’s use of the confusingly similar TEACHERS 1ST mark and Domain Name.”

- Complainant twice attempted to contact Respondent about the Domain Name, but Respondent did not reply to Complainant’s communications.

- The Domain Name is confusingly similar to the TEACHERS FIRST Trademark because “Complainant owns and has well-established rights in its registered TEACHERS FIRST® Mark” and the difference between “FIRST” and “1st” “is of little consequence given that the term ‘teachersfirst.com’ and ‘TEACHERS1ST.COM’ are phonetic equivalents and users seeking Complainant’s website at www.teachersfirst.com may mistype the URL as ‘TEACHERS1ST.COM.’”

- Respondent has no rights or legitimate interests in the Domain Name because Complainant “has not licensed the respondent to use the domain name,” “Respondent is not commonly known by the Domain Name and has not acquired trademark or service mark rights in the Domain Name,” Respondent previously used the Domain Name for a business for which it did not fulfill orders “and may have defrauded customers who placed orders for Respondent’s cookware” and “Respondent replaced its previous website with a generic placeholder page containing sponsored links” after being contacted by Complainant.

- The Domain Name has been registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy because “Respondent registered the Domain Name to deceptively attract and then misdirect Internet users for Respondent’s own commercial gain” and “Respondent changed the content of the website accessible via the Domain Name after it received Complainant’s demand letter.”

B. Respondent

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

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the federal trademark registration in the United States of America cited by Complainant (and supported by a copy of a certificate of registration), it is clear that Complainant has rights in the TEACHERS FIRST Trademark.

As to whether the Domain Name is identical or confusingly similar to Complainant’s TEACHERS FIRST Trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “teachers1st”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Domain Name is not identical to a trademark in which Complainant has rights, as the second-level portion of the Domain Name (“teachers1st”) differs by its use of the abbreviation “1st” instead of the word “first”. However, Complainant need prove only that the Domain Name is “confusingly similar” to a mark in which Complainant has rights. The Panel agrees with the cases cited by Complainant that the Domain Name and the TEACHERS FIRST Trademark are “phonetic equivalents” and that “[t]he difference is of little consequence.” Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408; Sharman License Holdings Limited v. Mandel Enterprises Ltd., WIPO Case No. D2004-0841; Lockheed Martin Corporation v. Skunk Wrx LLC, WIPO Case No. D2004-0431.

Accordingly, the Domain Name is confusingly similar to Complainant’s TEACHERS FIRST Trademark and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name because Complainant “has not licensed the respondent to use the domain name,” “Respondent is not commonly known by the Domain Name and has not acquired trademark or service mark rights in the Domain Name,” Respondent previously used the Domain Name for a business for which it did not fulfill orders “and may have defrauded customers who placed orders for Respondent’s cookware” and “Respondent replaced its previous website with a generic placeholder page containing sponsored links” after being contacted by Complainant.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant specifically alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy.

In particular, Complainant states that Respondent registered the Domain Name to deceptively attract and then misdirect Internet users for Respondent’s own commercial gain and Respondent changed the content of the website accessible via the Domain Name after it received Complainant’s demand letter.

Printouts of pages from Respondent’s website using the Domain Name show that Respondent previously used the Domain Name in connection with services that could create a likelihood of confusion under the Policy, given the similarity of Complainant’s and Respondent’s services, that is, the sale of goods to teachers.

Furthermore, the Panel agrees with the case cited by Complainant that “[t]he fact that the Respondent’s website using the domain name in issue was only created after the Respondent was clearly put on notice of the Complainant’s rights in the… trademark is a strong indication of use of that domain name in bad faith.” Stoxx A.G. v. Pandoro Golf S.L., WIPO Case No. D2002-0303.

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

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 <teachers1st.com> be transferred to Complainant.


Douglas M. Isenberg
Sole Panelist

Dated: April 24, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0311.html

 

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