WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FHG Holdings Pty LTD d/b/a Click Business Cards v. Jim Smith
Case No. D2006-0670
1. The Parties
The Complainant is FHG Holdings Pty LTD d/b/a Click Business Cards, St Ives, New South Wales, Australia, represented by Armstrong Teasdale, LLP, St Louis, Missouri, United States of America.
The Respondent is Jim Smith, Las Vegas, Nevada, United States of America..
2. The Domain Name and Registrar
The Disputed Domain Name <clickbusinesscard.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2006. On April 24, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 24, 2006, Tucows 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. 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 May 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2006.
The Center appointed Charné Le Roux as the sole panelist in this matter on July 28, 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 Rules, paragraph 7.
4. Factual Background
The Complainant is a supplier of business cards and is an Australian business based in Sydney, Australia. It has conducted business in the software development and printed industry since 1981. It owns the domain name and operates the website “www.clickbusinesscards.com”. The website is dedicated to ordering business cards over the Internet.
The Complainant registered its trademark, CLICK BUSINESS CARDS, in the USA on January 31, 2006. It advises that it has used the mark CLICK BUSINESS CARDS in Australia and internationally since 1996.
The information regarding the Respondent that is available to this Panel is that the Respondent registered the Disputed Domain Dame on April 7, 2004. The website maintained by the Respondent under the disputed domain name currently resolves to the website at “www.yahoo.com”.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to its trademark, CLICK BUSINESS CARDS, because it consists of a slight typographical variation of the Complainant’s trademark.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent is not related to the Complainant, has no relationship with the Complainant and does not have the Complainant’s permission to use the mark ;
b) the Respondent is not using the Disputed Domain Name in connection with the bona fide offering of goods and services;
c) the Respondent is using the confusingly similar Disputed Domain Name to divert Internet users to the Complainant’s competitor sites;
d) the Respondent benefits from the Complainant’s goodwill and capitalizes on Internet users, seeking an online business card retail service by rerouting them to competitor sites.
The Complainant contends that the Respondent acquired and uses the Disputed Domain Name in bad faith in that:
a) the Respondent has registered and uses the Disputed Domain Name in an attempt to appropriate the goodwill of the Complainant for its own purposes;
b) the Respondent must have been aware of the Complainant’s registered mark or domain name when it registered the Disputed Domain Name;
b) the Respondent is deliberately exploiting the Complainant’s mark;
c) the Respondent briefly complied with letters of demand sent by the Complainant to it on two occasions on May 10, 2004 and March 17, 2006, but resumed the activity of redirecting Internet traffic to the Complainant’s competitors shortly afterwards.
d) the Respondent re-registered the Disputed Domain Name with false and fictional contact information;
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Default of the Respondent: The Respondent has not reacted to the complaint, but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant do, however, in terms of the rules, permit the Panel to draw appropriate inferences.
Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:
a) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
c) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it is the owner of rights in the trademark, CLICK BUSINESS CARDS. The Panel accepts that the Complainant has used the trademark CLICK BUSINESS CARDS in Australia since 1996. The Complainant’s US trademark registration indicates that its first use in the United States of America, where the Respondent appears to be located, was on July 15, 2000. The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. It is the singular form of the CLICK BUSINESS CARDS trademark of the Complainant.
B. Rights or Legitimate Interests
The Panel in Do The Hustle Llc v. Tropic Web, WIPO Case No. D2000-0624, summarized the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that, once the Complainant has asserted that the Respondent has no rights or legitimate interests, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim.
In paragraph 4(c), the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interests in the domain name. The Complainant in this matter has made the required assertion to which the Respondent has not reacted.
The Panel finds that the Respondent’s failure to file a response indicates a lack of legitimate interests. See Time Out Group Limited v. Mark Jacobson, WIPO Case No. D2001-0317. Furthermore, the facts of this matter are that the Respondent used the Disputed Domain Name to promote competing services and the sale of goods in direct competition with the Complainant. Although it is not currently doing so, the Panel accepts the evidence submitted by the Complainant that it has done so in the past.
The Panel also finds that Internet users will be attracted to the website linked to the domain name by the CLICK BUSINESS CARDS trademark, believing that it is in some way associated with the Complainant. The Panel is of the view that the Respondent’s only interest in the Disputed Domain Name is to derive a benefit from the goodwill that attaches the Complainant’s trademark and/or to disrupt the Complainant’s business.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Paragraph 4(b)(iv) of the Policy provides that bad faith may be evidenced by use by the Respondent of a domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location by creating the likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or the product or service on its website or location.
The Panel finds that the registration of the Disputed Domain Name by the Respondent is indeed intentionally diverting Internet users by exploiting the confusion and similarity between the Disputed Domain Name and the Complainant’s CLICK BUSINESS CARDS trademark and that the Respondent must be engaging in such conduct in order to reap a commercial benefit.
The Panel also finds that the initial compliance by the Respondent of the written demands made by the Complainant’s legal representatives signals an agreement with the contentions made by the Complainant, but that its refusal permanently to comply with these demands and its subsequent provision of false and misleading contact information, also constitute evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003.
In accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel finds that the Complainant has established that:
i. the Disputed Domain Name is identical or confusingly similar to the Complainant’s CLICK BUSINESS CARDS trademark;
ii the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii the Disputed Domain Name has been registered and is being used in bad faith.
Accordingly the Panel grants the Complainant’s request that the Disputed Domain Name, <clickbusinesscard.com>, be transferred to the Complainant.
Charné Le Roux
Dated: August 11, 2006