Решение The National Arbitration Forum относительно домена michealholligan.com, 2000 Oly Holigan, L.P. v. Private

©National Arbitration Forum, http://www.arbitration-forum.com. Used by Permission.

THE NATIONAL ARBITRATION FORUM

 

DECISION

Oly Holigan, L.P. v. Private

Claim Number: FA0011000095940

PARTIES

 

The Complainant is Oly Holigan, L.P., Dallas, TX, USA ("Complainant") represented by Stephen L. Sapp, Locke, Liddell & Sapp LLP. The Respondent is Private, Moscow, RUSSIA ("Respondent").

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is "michealholligan.com" registered with Bulkregister.

PANELIST

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 6, 2000; The Forum received a hard copy of the Complaint on November 7, 2000.

On 11/7/00, Bulkregister confirmed by e-mail to the Forum that the domain name(s) "michealholligan.com" is registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNТs UDRP.

On November 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on RespondentТs registration as technical, administrative and billing contacts, and to postmaster@michealholligan.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 4, 2000, pursuant to ComplainantТs request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the ForumТs Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

 

RELIEF SOUGHT

 

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIESТ CONTENTIONS

1.  
 
2. Complainant

ComplainantТs contentions are listed as follows:

•  
  • RespondentТs Domain Name, "Michealholligan.com," Is Identical And/Or Confusingly Similar To The Holigan Marks, Including Michaelholigan.Com."
  • Respondent Has No Rights Or Legitimate Interests In "Michealholligan.com."
  • Respondent Has Registered and Used "Michealholligan.com." In Bad Faith

B. Respondent

Respondent failed to provide the Panel with any submissions regarding the domain name in question.

FINDINGS

ComplainantТs Marks

(1) MICHAELHOLIGAN.COM, U.S. common law trademark and registered domain name of Holigan (registered May 6, 1997) used in association with HoliganТs website since at least as early as May 6, 1997, which in addition to being a retail site for the goods and services of Holigan, also markets and sells goods and services of others and, through links to related sites, serves as an internet directory for the goods and services of others;

(2) MICHAELHOLIGAN.COM, U.K. Reg. No. 2220199, registered July 7, 2000, for use with "publications and printed matter, namely, magazines, pamphlets and product brochures in the field of residential homes and residential housing construction," in International Class 16; and "franchise services, namely, offering technical assistance in establishing, operating, marketing, and developing franchised businesses that offer, construct, and sell residential homes and manufactured residential housing by means of customary advertising of the services and by means of a global computer network," in International Class 35;

(3) MICHAEL HOLIGAN.COM NOBODY KNOWS HOMES LIKE HOLIGAN & DESIGN, U.S. Application Serial No. 75/758,686, filed July 23, 1999, published August 15, 2000, for use with "publications and printed matter, namely, magazines, pamphlets and product brochures in the field of residential homes and residential housing construction," in International Class 16;

(4) MICHAEL HOLIGAN.COM NOBODY KNOWS HOMES LIKE HOLIGAN & DESIGN, U.S. Application Serial No. 75/758,799, filed July 23, 1999, allowed October 31, 2000, for use with "franchise services, namely, offering technical assistance in establishing, operating, marketing, and developing franchised businesses that offer, construct, and sell residential homes, through consultation and by means of a global computer network," in International Class 35;

(5) MICHAEL HOLIGAN HOMES, U.K. Reg. No. 2220195, registered August 4, 2000, for use with "publications and printed matter, namely, magazines, pamphlets and product brochures in the field of residential homes and residential housing construction," in International Class 16; and "franchise services, namely, offering technical assistance in establishing, operating, marketing, and developing franchised businesses that offer, construct, and sell residential homes and manufactured residential housing by means of customary advertising of the services and by means of a global computer network," in International Class 35;

(6) MICHAEL HOLIGANТS YOUR NEW HOUSE & DESIGN, U.S. Reg. No. 2,226,008, registered February 23, 1999, for use with a "television program in the field of real estate and residential construction," in International Class 41;

(7) MICHAEL HOLIGANТS YOUR NEW HOUSE & DESIGN, U.S. Reg. No. 2,268,525, registered August 10, 1999, for use with "providing multiple user access to a web site on a global computer information network for access to products and services related to construction of homes, manufactured housing, printed materials, namely, magazines and television programming related to same," in International Class 42;

(8) MICHAEL HOLIGAN HOMES, U.S. Reg. No. 2,287,717, registered October 19, 1999, for use with services in International Class 37, namely, "construction of homes";

(9) MICHAEL HOLIGAN HOMES & DESIGN, U.S. Reg. No. 2,272,279, registered August 24, 1999, for use with "building construction and repair," in International Class 37;

(10) MICHAEL HOLIGANТS YOUR NEW HOUSE & DESIGN, U.S. Reg. No. 2,318,257, registered February 15, 2000, for use with a "television program in the field of real estate and residential construction," in International Class 41.

(11) Complainant is also the owner of several pending trademark applications in various countries worldwide including the United States, the United Kingdom, Mexico, Canada and Korea, for marks which include the distinctive and dominant component "MICHAEL HOLIGAN".

 

RespondentТs Registration of Domain Name

The Respondent initially linked the domain name to "BESTOFTHEWEB.COM," an internet directory linking to a variety of sites featuring the goods and services of others. A couple of weeks later, RespondentТs domain name was being used to redirect consumers to another commercial web site, "SITESVOTEDBEST.COM," an internet directory linking to a variety of sites featuring the goods and services of others. A few weeks thereafter, RespondentТs domain name was being used to redirect consumers to a third on-line location, "ENTERCASINO.COM," a gambling site.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

As such, the Panel will base its findings and conclusions on the Complaint, UDRP and other legal precedent and reasonable assertions of law. The Panel concludes that the Respondent does not deny the assertions set forth in the Complainant.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The RespondentТs domain name is distinguishable from the ComplainantТs marks only by noting the RespondentТs juxtaposition of the letters "AE" to "EA" in the word "MICHAEL," and its additional letter "L" in the word "HOLIGAN." Therefore, RespondentТs domain name and ComplainantТs marks are substantially identical, or at minimum, confusingly similar. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, and , are common misspellings and therefore confusingly similar); State Farm v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name is confusingly similar to the ComplainantТs mark "State Farm").

Rights or Legitimate Interests

RespondentТs domain name does not resolve to a web site, which actually uses the name "MICHEALHOLLIGAN" nor does it resolve to a web site that offers products or services under the name "MICHEALHOLLIGAN.COM". In fact, the Respondent does not provide any bona fide products and services in connection with the domain name. Instead, the domain name is linked to other websites. Based on this, the Panel concludes that the Respondent cannot claim any rights or legitimate interests in the name under the standards set by Policy ¶ 4.c.

Registration and Use in Bad Faith

Respondent has been using its domain name to deceive consumers and misappropriate the goodwill of Complainant by redirecting the ComplainantТs consumers and potential consumers to commercial web sites which are not affiliated with Complainant and leading consumers to believe that such sites are affiliated with, or otherwise sponsored or approved by Complainant. Policy ¶ 4.b.(iv). See Anne of Green Gable Licensing Authority, Inc. v. Internetworks, AF-00109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name to link users to a website that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site). Based upon this, the Panel concludes that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name michealholligan.com be transferred from the Respondent to the Complainant.

 

 

Ralph Yachnin

Justice, NY Supreme Court (Ret.)

 

Dated: December 4, 2000