WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Provo Craft & Novelty, Inc. v. Jennifer Summers
Case No. D2010-2019
1. The Parties
The Complainant is Provo Craft & Novelty, Inc. of South Jordan, Utah, United States of America, represented by Matthew Tuttle, United States of America.
The Respondent is Jennifer Summers of Temecula, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names <cricutchecklist.com> and <cricutmagazine.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2010. On November 24, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 24, 2010, GoDaddy.com, Inc. 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 amendment to the Complaint on Complaint on December 23, 2010 and January 5, 2011.
The Center verified that the Complaint together with the amendments to 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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on January 28, 2011.
The Center received communications from the Respondent on January 26, 2011, February 2, 2011 and February 3, 2011. The January 26, 2011 communication claimed that a Response had been filed, which the Center verified it had not received. Accordingly, the Center notified the Respondent that it was not in receipt of a Response and of its default under the Policy on January 28, 2011. None of Respondent’s subsequent communications transmitted a formal Response or addressed the Center’s non-receipt of the same or its default.
The Center appointed Richard Hill as the sole panelist in this matter on February 10, 2011. 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 owns United States (“U.S.”) Trademark, No. 3326119, CRICUT.
The Respondent is aware of the Complainant’s business activities.
The Complainant has not authorized the Respondent to use its marks.
The Respondent is using the disputed domain names to point to websites, which are related to the Complainant’s business and that contain sponsored advertising links.
5. Parties’ Contentions
The Complainant alleges that it owns the trademark CRICUT. The goods and services that are covered under the mark are: machines for cutting paper, cardstock and other materials in sheet form and electronic memories contained in a cartridge to be inserted in an electronic paper cutting machine.
According to the Complainant, the disputed domain names are confusingly similar to its mark.
The Complainant states that it has not given the Respondent permission to use its mark. The Respondent did not register the disputed domain names until March 2010 and has not been commonly known by the disputed domain names.
Further, says the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. The Respondent is using the disputed domain names with the intent for commercial gain. By using the disputed domain names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondents websites by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not submit a formal reply to the Complainant’s contentions. The Respondent, did however, submit some comments, which the Panel will summarize here.
The Respondent alleges that the Complainant’s use of a new logo on Facebook is an infringement of a logo that it owns and has been using since August 2010.
The Respondent further alleges that the Complainant is infringing on its copyrights and states that the Complainant does not have a valid claim to the disputed domain names.
The Respondent alleges that the Complainant is attempting to engage in reverse domain name hijacking.
6. Discussion and Findings
Before addressing with the substantive issues, the Panel will deal with the procedural issue raised by the fact that the Respondent did not submit a formal Response. According to 10 (b) of the Rules, in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. According to 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. Accordingly, the Panel will consider the communications sent by the Respondent. See NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A, WIPO Case No. D2008-1984.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar, in the sense of the Policy, to the Complainant’s registered trademark because they consist of the mark together with the common words “checklist” and “magazine”. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
B. Rights or Legitimate Interests
The Respondent’s does not present any explanation for its registration of the disputed domain names. In accordance with 14(d) of the Rules, Panel shall draw such inferences as it considers appropriate from the Respondent’s silence. Since the record shows that the Respondent is well aware of the Complainant’s mark, products, and services, the Panel infers from the Respondent’s silence that he has no plausible explanation for his registration of the disputed domain names.
Indeed, there is no evidence to show that the Respondent has any rights to the disputed domain name. Further, the Panel holds, for the reasons set forth below, that the Respondent registered and is using the disputed domain name in bad faith and thus cannot have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent admits that it is very familiar with the Complainant’s business activities and mark. Indeed, the Panel finds that the Respondent is using the disputed domain names to point to websites that are related to the Complainant’s business and contain sponsored advertising links.
Consumers finding those web sites might be mislead into thinking that they are associated with the Complainant. This could tarnish the Complainant’s mark and disrupt the Complainant’s business.
Having considered all the facts in this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith under Policy paragraph 4(a)(iii) and 4(b). See Digi Internationl Inc. v. DDI Systems., FA. 124506 (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Reverse domain name hijacking
The Respondent alleges that the Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. As the Panel has found in favor of the Complainant, it dismisses the request for a finding of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.”)
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 names, <cricutchecklist.com> and <cricutmagazine.com>, be transferred to the Complainant. The request for a finding of reverse domain name hijacking is dismissed.
Dated: February 11, 2011