WIPO Domain Name Decision: D2007-0750

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ellison Educational Equipment Inc. v. Amethyst

Case No. D2007-0750

1. The Parties

The Complainant is Ellison Educational Equipment Inc., Lake Forest, California, United States of America, represented by Kimberly V. Fogarty, United States of America.

The Respondent is Amethyst, Rugby, Warwickshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <sizzixdies.com> is registered with Advantage Interactive Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2007. On May 25, 2007, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the domain name at issue. On June 8, 2007, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an electronic version of the Complaint as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2007.

The Center appointed Dan Hunter as the sole panelist in this matter on July 24, 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

A. The Complainant and its Mark

The Complainant is an American corporation that manufactures and sells the “Sizzix” die cutting machine and system, together with associated products for the arts & crafts market. Complainant is the owner of the registered mark SIZZIX in a number of classes in the United States of America, Australia, the European Union and other countries. The Complainant has also registered the domain name <sizzix.com>, and operates a website at that URL. The Complainant also has a registered trademark on the Principal Register of the U.S. Trademark Office for the mark SIZZIX.COM.

B. The Respondent

The Respondent is a business, apparently trading under the name “Rugby Crafts.” As no Response was filed, nothing further is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainant asserts (in pertinent part):

(1) The domain name is a combination of a dominant and distinctive element embodying the essence of the Sizzix product offerings. It includes the fanciful name SIZZIX and a purely descriptive element: dies.

(2) The Respondent redirects the domain name to a website where Sizzix products are sold.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts (in pertinent part):

(1) The Respondent has no rights to own the domain name. Complainant did not give Respondent permission to use the domain name, and requested the Respondent to cease from using it.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts (in pertinent part):

(1) The Respondent has intentionally attempted to attract, for commercial gain, Internet users using the domain name to the Complainant’s detriment.

(2) The Respondent has refused to transfer the domain name to the Complainant when requested to do so.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the “.com” namespace. Paragraph 4(a) of the Policy requires a Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

(1) The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

(2) The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

(3) The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

1. Identical or Confusingly Similar to a Trademark

There are two requirements that a Complainant must establish under this paragraph: that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its various “SIZZIX” marks registered in the United States of America and elsewhere. The Panel concludes that the Complainant, as registered owner of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The <sizzixdies.com> domain name is confusingly similar to the registered marks, because it comprises the trademark together with a descriptor of the product that is the subject of the trademark. The addition of the “.com” TLD does not change the meaning of the name. Hence the Panel concludes that the domain name is, for the purposes of the Policy, confusingly similar to the Complainant’s marks.

The Complainant has shown that it has the appropriate rights in a trademark, and that the domain name is confusingly similar to this mark. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. It asserts, inter alia, that the Respondent has not been authorized by the Complainant to use the mark. The Respondent has provided no Response and there is no evidence that it has any rights or legitimate interests as set out in in paragraph 4(c) of the Policy. Further, the distinctive or even fanciful character of the mark SIZZIX lends weight to a supposition that the Respondent lacks independent rights or legitimate interests in the domain name.

The Panel finds that the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the UDRP.

3. Registered and Used in Bad Faith

The Complainant asserts that the Respondent has registered and is using the domain name in bad faith, as required under paragraph 4(a)(ii) of the Policy. It makes the specific assertion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users using the domain name to the Complainant’s detriment, as per the requirements of paragraph 4(b)(iv) of the Policy. The Respondent has provided no Response. The Panel considers it highly unlikely that, given the combination of the Complainant’s SIZZIX mark in the domain name with a description of its area of business, that the Respondent was not aware of the Complainant at the time of registering the domain name. Since the evidence before the Panel, although not exhaustive, is that the Respondent is seeking to trade on the name of the Complainant, the Panel concludes that the Complainant has on balance made out this element via the exemplar of bad faith as specified in paragraph 4(b)(iv).

The Panel finds that the Complainant has on balance satisfied the requirement of paragraph 4(a)(iii) of the UDRP.

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 <sizzixdies.com> be transferred to the Complainant.

Dan Hunter
Sole Panelist

Dated: August 7, 2007