Domains – NATIONAL ARBITRATION FORUM DECISION TRANSFERRED from Respondent to Complainant

PARTIES

Complainant is Lastar, Inc., d/b/a Cables To Go (“Complainant”), represented by David Shough of Law Office of David A. Shough, Ohio, USA.  Respondent is NextEngine Ventures, LLC (“Respondent”), represented by Sue M. Winchester of Winchester Law Group, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gocables.com>, registered with GoDaddy.com, LLC.

 

PARTIES’ CONTENTIONS

  1. Complainant
  2. Complainant is the owner of the CABLES TO GO mark, first used in commerce by Complainant in 1984 and registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,038,794 registered Jan. 10, 2006.)
  3. Complainant’s CABLES TO GO mark is extremely well known in the commercial connectivity industry.
  4. Respondent’s <gocables.com> domain name is confusingly similar to Complainant’s CABLES TO GO mark.
  5. Eliminating the preposition “to” and combining the terms “GO” and “CABLES” are insufficient variations to Complainant’s CABLES TO GO mark to avoid a finding of confusingly similar.
  6. Respondent is not making a bona fide offering of goods and services and is not commonly known by the <gocables.com> domain name.
  7. The disputed domain name resolves to websites unrelated to Complainant’s business.
  8. Respondent is using the <gocables.com> domain name to divert Complainant’s customers to Respondent’s websites.
  9. Respondent has registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
  10. Respondent’s <gocables.com> domain name resolves to a website featuring modeling industry links.

 

  1. Respondent
  2. Respondent was not aware of Complainant’s CABLES TO GO mark.
  3. Complainant’s brand and mark are not famous.
  4. The <gocables.com> domain name was included in a bulk purchase of 344 domains for $90,000 on October 4, 2010.
  5. Respondent’s <gocables.com> domain name is not confusingly similar to Complainant’s mark.
  6. There is no confusion or similarity between Complainant’s mark and Respondent’s disputed domain name because reversing the terms “GO” and “CABLES” changes the meaning of the term and is therefore  sufficient to distinguish it from Complainant’s mark.
  7. Respondent has rights or legitimate interests in the <gocables.com> domain name.
  8. Respondent is engaged in the business of trading domain names, which previous panels have not objected to as bad faith.
  9. Respondent’s interest in the <gocables.com> domain name is irrelevant and not a legitimate basis for requiring a transfer.
  10. Third party websites are not involved and Respondent is not receiving any compensation.
  11. There is no evidence that Respondent registered the <gocables.com> domain name for the purpose of selling, or otherwise transferring the domain name to Complainant or a competitor of Complainant.
  12. Respondent is not attempting to disrupt Complainant’s business.
  13. Respondent is not trying to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s CABLES TO GO mark.

 

  1. Additional Submissions

The Additional Submissions of the parties did not present any new information relevant to this Decision.

 

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules instructs this 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.”

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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

 

Complainant asserts that it and its CABLES TO GO mark are well known in the commercial connectivity market. Complainant claims that it has rights in the CABLES TO GO mark based on its registration with the USPTO (Reg. No. 3,038,794 registered Jan. 10, 2006.). Registration with a recognized trademark agency is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has rights in the CABLES TO GO mark through its registration with the USPTO.

 

Complainant claims that Respondent’s <gocables.com> domain name is confusingly similar to its CABLES TO GO mark. Complainant argues that the components to Respondent’s disputed domain name are identical to those in Complainant’s registered mark. Complainant claims that Respondent combines the word “GO” with the term “CABLES”, which creates the same impression as does Complainant’s CABLES TO GO mark. Complainant further points out in its complaint that the elimination of the term “to” and reversing the predominant terms in the domain is insufficient to distinguish it from Complainant’s registered mark.

 

In the very similar case of Lastar, Inc. v. The Cable and Wire Supplier, Inc.,       FA 1301907 (Nat. Arb. Forum Feb. 17, 2010), the Panel found respondent’s <cablegodirect.com> registration to be confusingly similar to complainant’s CABLES TO GO registration. In that proceeding, as in this one, the word “to” was eliminated from the CABLES TO GO mark. This Panel therefore similarly finds that Respondent’s <gocables.com> domain name is confusingly similar to Complainant’s CABLES TO GO mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent has no rights or legitimate interests in the <gocables.com> domain name because it is not commonly known by the name or any version of it. The Panel notes that the WHOIS information for the <gocables.com> domain name lists “NextEngine Ventures, LLC” as Registrant. Previous panels have found that a Respondent is not commonly known by a disputed domain name where there is no evidence in the record to indicate that a respondent was commonly known by a disputed domain name. SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the <gocables.com> domain name according to Policy          ¶ 4(c)(ii).

 

Complainant claims that Respondent has not shown demonstrable preparation to use the disputed domain name wherein Respondent admittedly diverts Complainant’s potential customers to Respondent’s multiple websites.   This Panel agrees, and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name and thus has no rights or legitimate interests in the <gocables.com> domain name.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent demonstrated intent to divert internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”.); see also Summit Group, LLC v. LSO Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

 

Complainant claims that Respondent has registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent is using the confusingly similar <gocables.com> domain name to redirect consumers to its commercial websites featuring products and services that have no connection with the disputed domain name or Complainant’s products. Complainant asserts that this supports the claim that the <gocables.com> domain name is being used to confuse Complainant’s potential customers as to Complainant’s association to the domain name, and to commercially gain from that confusion. Previous panels have found that diverting a complainant’s potential customers to a site unrelated to the complainant is bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel thus finds that Respondent registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

This Panel also infers that Respondent knew of Complainant’s registered mark when it registered the domain name. It can be expected that a domainer such as Respondent, which had the resources to purchase 344 domain names in bulk, exercised its resources to gather information regarding the domains it was purchasing. This inference further supports the Panel’s finding of registration in bad faith.

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <gocables.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated:  February 28, 2013

 

 

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NATIONAL ARBITRATION FORUM

DECISION

Lastar, Inc., d/b/a Cables To Go v. NextEngine Ventures, LLC

Claim Number: FA1301001480933

PARTIES

Complainant is Lastar, Inc., d/b/a Cables To Go (“Complainant”), represented by David Shough of Law Office of David A. Shough, Ohio, USA.  Respondent is NextEngine Ventures, LLC (“Respondent”), represented by Sue M. Winchester of Winchester Law Group, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gocables.com>, registered with GoDaddy.com, LLC.

 

PANEL

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

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2013; the National Arbitration Forum received payment on January 18, 2013.

 

On January 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gocables.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected]  Also on January 18, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on February 7, 2013.

 

Complainant submitted a timely Additional Submission on February 12, 2013.

 

Respondent submitted a timely Additional Submission on February 19, 2013.

 

On February 14, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

  1. Complainant
  2. Complainant is the owner of the CABLES TO GO mark, first used in commerce by Complainant in 1984 and registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,038,794 registered Jan. 10, 2006.)
  3. Complainant’s CABLES TO GO mark is extremely well known in the commercial connectivity industry.
  4. Respondent’s <gocables.com> domain name is confusingly similar to Complainant’s CABLES TO GO mark.
  5. Eliminating the preposition “to” and combining the terms “GO” and “CABLES” are insufficient variations to Complainant’s CABLES TO GO mark to avoid a finding of confusingly similar.
  6. Respondent is not making a bona fide offering of goods and services and is not commonly known by the <gocables.com> domain name.
  7. The disputed domain name resolves to websites unrelated to Complainant’s business.
  8. Respondent is using the <gocables.com> domain name to divert Complainant’s customers to Respondent’s websites.
  9. Respondent has registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
  10. Respondent’s <gocables.com> domain name resolves to a website featuring modeling industry links.

 

  1. Respondent
  2. Respondent was not aware of Complainant’s CABLES TO GO mark.
  3. Complainant’s brand and mark are not famous.
  4. The <gocables.com> domain name was included in a bulk purchase of 344 domains for $90,000 on October 4, 2010.
  5. Respondent’s <gocables.com> domain name is not confusingly similar to Complainant’s mark.
  6. There is no confusion or similarity between Complainant’s mark and Respondent’s disputed domain name because reversing the terms “GO” and “CABLES” changes the meaning of the term and is therefore  sufficient to distinguish it from Complainant’s mark.
  7. Respondent has rights or legitimate interests in the <gocables.com> domain name.
  8. Respondent is engaged in the business of trading domain names, which previous panels have not objected to as bad faith.
  9. Respondent’s interest in the <gocables.com> domain name is irrelevant and not a legitimate basis for requiring a transfer.
  10. Third party websites are not involved and Respondent is not receiving any compensation.
  11. There is no evidence that Respondent registered the <gocables.com> domain name for the purpose of selling, or otherwise transferring the domain name to Complainant or a competitor of Complainant.
  12. Respondent is not attempting to disrupt Complainant’s business.
  13. Respondent is not trying to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s CABLES TO GO mark.

 

  1. Additional Submissions

The Additional Submissions of the parties did not present any new information relevant to this Decision.

 

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules instructs this 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.”

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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

 

Complainant asserts that it and its CABLES TO GO mark are well known in the commercial connectivity market. Complainant claims that it has rights in the CABLES TO GO mark based on its registration with the USPTO (Reg. No. 3,038,794 registered Jan. 10, 2006.). Registration with a recognized trademark agency is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has rights in the CABLES TO GO mark through its registration with the USPTO.

 

Complainant claims that Respondent’s <gocables.com> domain name is confusingly similar to its CABLES TO GO mark. Complainant argues that the components to Respondent’s disputed domain name are identical to those in Complainant’s registered mark. Complainant claims that Respondent combines the word “GO” with the term “CABLES”, which creates the same impression as does Complainant’s CABLES TO GO mark. Complainant further points out in its complaint that the elimination of the term “to” and reversing the predominant terms in the domain is insufficient to distinguish it from Complainant’s registered mark.

 

In the very similar case of Lastar, Inc. v. The Cable and Wire Supplier, Inc.,       FA 1301907 (Nat. Arb. Forum Feb. 17, 2010), the Panel found respondent’s <cablegodirect.com> registration to be confusingly similar to complainant’s CABLES TO GO registration. In that proceeding, as in this one, the word “to” was eliminated from the CABLES TO GO mark. This Panel therefore similarly finds that Respondent’s <gocables.com> domain name is confusingly similar to Complainant’s CABLES TO GO mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent has no rights or legitimate interests in the <gocables.com> domain name because it is not commonly known by the name or any version of it. The Panel notes that the WHOIS information for the <gocables.com> domain name lists “NextEngine Ventures, LLC” as Registrant. Previous panels have found that a Respondent is not commonly known by a disputed domain name where there is no evidence in the record to indicate that a respondent was commonly known by a disputed domain name. SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the <gocables.com> domain name according to Policy          ¶ 4(c)(ii).

 

Complainant claims that Respondent has not shown demonstrable preparation to use the disputed domain name wherein Respondent admittedly diverts Complainant’s potential customers to Respondent’s multiple websites.   This Panel agrees, and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name and thus has no rights or legitimate interests in the <gocables.com> domain name.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent demonstrated intent to divert internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”.); see also Summit Group, LLC v. LSO Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

 

Complainant claims that Respondent has registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent is using the confusingly similar <gocables.com> domain name to redirect consumers to its commercial websites featuring products and services that have no connection with the disputed domain name or Complainant’s products. Complainant asserts that this supports the claim that the <gocables.com> domain name is being used to confuse Complainant’s potential customers as to Complainant’s association to the domain name, and to commercially gain from that confusion. Previous panels have found that diverting a complainant’s potential customers to a site unrelated to the complainant is bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel thus finds that Respondent registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

This Panel also infers that Respondent knew of Complainant’s registered mark when it registered the domain name. It can be expected that a domainer such as Respondent, which had the resources to purchase 344 domain names in bulk, exercised its resources to gather information regarding the domains it was purchasing. This inference further supports the Panel’s finding of registration in bad faith.

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <gocables.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated:  February 28, 2013

 

 

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