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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	100099
Time of Filing	2009-09-08 03:18:52
Disputed domain name	SUBLIMEDIRECTORIES.COM

Case Administrator
Name	Tereza Bartošková

Complainant
Organization	Redfan of Panama, Inc.
Authorized Representative
Name	Mr. Marc John Randazza

Respondent
Name	Gu Bei

A summary of this Decision is hereby attached in English as an Annex.

Other Legal Proceedings
The panel is aware of no other legal proceedings relevant to this dispute.

Factual Background
On September 8, 2009, Complainant Redfan of Panama, Inc., located in Miami, Florida, USA, filed with the Czech Arbitration Court ("CAC") the Complaint in this proceeding, relating to the domain name <sublimedirectories.com> (the "Disputed Domain Name"), via its authorized representative, Marc John Randazza, Esquire, of Marc J. Randazza PA, located in Miami, Florida, USA, against Respondent Gu Bei, who, according to the relevant Whois record, is located in Shanghai, China. On September 8, 2009, CAC submitted to the Registrar, Public Domain Registry, a request for registrar verification in connection with the Complaint. Following further communications among CAC, Registrar and counsel for Complainant regarding administrative matters relating to the Complaint, CAC informed counsel for Complainant on September 16, 2009, of certain deficiencies in the Complaint and requested that counsel for Complainant file an amended Complaint, which occurred on the same date. On September 24, 2009, CAC commenced the proceeding in this matter, informing Respondent that it must submit its Response to the CAC within 20 days. On October 7, 2009, CAC informed Respondent that CAC had not received a response and reminded Respondent of the deadline for submission, October 14, 2009. On October 16, 2009, CAC issued a notification that no response had been received. On October 16, 2009, CAC issued a panelist selection communication indicating that Douglas M. Isenberg had been appointed as the single-member panel in this proceeding. CAC received Mr. Isenberg's "Statement of Acceptance, Impartiality and Independence" on the same date. On October 19, 2009, CAC notified the parties of Mr. Isenberg's selection.

Factual Background

On September 8, 2009, Complainant Redfan of Panama, Inc., located in Miami, Florida, USA, filed with the Czech Arbitration Court ("CAC") the Complaint in this proceeding, relating to the domain name <sublimedirectories.com> (the "Disputed Domain Name"), via its authorized representative, Marc John Randazza, Esquire, of Marc J. Randazza PA, located in Miami, Florida, USA, against Respondent Gu Bei, who, according to the relevant Whois record, is located in Shanghai, China.

On September 8, 2009, CAC submitted to the Registrar, Public Domain Registry, a request for registrar verification in connection with the Complaint.

Following further communications among CAC, Registrar and counsel for Complainant regarding administrative matters relating to the Complaint, CAC informed counsel for Complainant on September 16, 2009, of certain deficiencies in the Complaint and requested that counsel for Complainant file an amended Complaint, which occurred on the same date.

On September 24, 2009, CAC commenced the proceeding in this matter, informing Respondent that it must submit its Response to the CAC within 20 days. On October 7, 2009, CAC informed Respondent that CAC had not received a response and reminded Respondent of the deadline for submission, October 14, 2009. On October 16, 2009, CAC issued a notification that no response had been received.

On October 16, 2009, CAC issued a panelist selection communication indicating that Douglas M. Isenberg had been appointed as the single-member panel in this proceeding. CAC received Mr. Isenberg's "Statement of Acceptance, Impartiality and Independence" on the same date.

On October 19, 2009, CAC notified the parties of Mr. Isenberg's selection.

Parties' Contentions
A. Complainant
Complainant states, and provides evidence to support, that it is the owner of a federal trademark registration in the United States, U.S. Reg. No. 3,633,914, for the word mark SUBLIME DIRECTORY. The registration for this trademark states that it was first used in commerce on April 30, 1996, in connection with "Providing on-line directory information services also featuring hyperlinks to other web sites; Promoting the goods and services of others by providing hypertext links to the web sites of others; Promotion, advertising and marketing of on-line web sites; Promoting, advertising and marketing of the on-line web sites of others" and "Providing an online web site for others to find links directing them to adult entertainment." The registration for this trademark further indicates that it was applied for on April 17, 2008, and registered on June 9, 2009. Complainant further states that it has common law trademark rights in this mark as the result of usage since April 30, 1996, and that the mark is "well known [as an] aggregator of links and information about adult entertainment." In support thereof, Complainant states, and provides evidence to support, that "[a]n analysis of the Complainant's website on Alexa.com shows that it is a tremendously popular website, ranking 6,788 overall, with 377 websites linking in to it." (The Panel's independent review of the Alexa.com website indicates that it is "An amazon.com company" and that it "has built an unparalleled database of information about sites that includes statistics, related links and more.") Complainant states that Respondent "is using <sublimedirectories.com> to compete with Complainant by attracting internet traffic that was otherwise destined to arrive at <sublimedirectory.com>, but that is misdirected to the Respondent's website." Further, Complainant states that the Disputed Domain Name "has currently one function, to make money by piggybacking off of the SUBLIME DIRECTORY® mark in order to gain more traffic in hopes of creating more revenue through advertising on the infringing domain." The Whois record for the Disputed Domain Name provided by Complainant states that the Disputed Domain Name was created on February 21, 2007. However, the Complaint states that "Respondent registered <sublimedirectories.com> on August 18, 2009." Prior to that date, according to the Complaint, the Disputed Domain Name was registered to Chen Fang Fang, and "[u]nder the UDRP each change of registrant or transfer of a domain name constitutes a new registration." Complainant states, and provides evidence to support, that Respondent has registered "a rash of domain names that correspond to registered and famous trademarks," including <toysruus.com>, <toysrusuk.com>, <msnbc10.com>, <googlcom.com>, <hotmailespanol.com>, <msnfrancais.com>, <disnenchannel.com>, <pottrybarnteen.com>, <marlbora.com>, <hotmaiml.com> and <maybellline.com>. Complainant states that "Respondent selected the disputed domain name[] (Sublimedirectories.com) only because it is similar to the Complainant's current domain (sublimedirectory.com)" and that the Disputed Domain Name "is nothing more than a pay-per-click cybersquatting site." An exhibit provided by Complainant shows a website using the Disputed Domain Name that contains photographs and links related to "adult entertainment."
B. Respondent
Respondent did not submit a Response or any other communications to CAC in this proceeding.

Discussion and Findings
Pursuant to the UDRP, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. UDRP, paragraph 4(a). A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which [it] has rights." Based on the information provided by Complainant, the Panel is convinced that Complainant has rights in the trademark SUBLIME DIRECTORY. As to whether the Disputed Domain Name is identical or confusingly similar to the trademark SUBLIME DIRECTORY, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "sublimedirectories"), as it is well-established that the top-level domain name (i.e., ".com") should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 ("[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address"). In this case, it is apparent that the relevant portion of the Disputed Domain Name is merely the plural form of the relevant trademark. Numerous prior decisions under the UDRP have found confusing similarity in such instances. See, e.g., Research In Motion Limited v. Georges Elias, WIPO Case No. D2009-0218 (finding "blackberries" in disputed domain names "virtually identical to the Complainant's [BLACKBERRY] mark"); Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061 (finding <crowntrophies.com> confusingly similar to the trademark CROWN TROPHY); and Sally Holdings, Inc. v. Registrant, WIPO Case No. D2004-1059 (finding <sallysbeautysupplies.com> confusingly similar to the trademark SALLY BEAUTY SUPPLY). Similarly here, the Panel concludes that the Disputed Domain Name <sublimedirectories.com> is confusingly similar to Complainant's SUBLIME DIRECTORY trademark and, accordingly, Complainant has proven the first element of the UDRP. B. Rights or Legitimate Interests Complainant alleges that, inter alia, "Respondent is making neither a legitimate nor a noncommercial or fair use of" the Disputed Domain Name because Respondent is using the Disputed Domain Name to "compete with Complainant by attracting internet traffic that was otherwise destined to arrive at <sublimedirectory.com>, but that is misdirected to the Respondent's website." The Panel confirms that the website using the Disputed Domain Name as shown in an exhibit to the Complaint indeed contains content related to adult entertainment, which is similar to content on Complainant's website using the domain name <sublimedirectory.com> and also among the services listed in Complainant's federal trademark registration for SUBLIME DIRECTORY. Under the UDRP, "'a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP'." Christian Dior Couture v. Versata Software, Inc., WIPO Case No. D2009-0102 (quoting "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", paragraph 2.1, http://arbiter.wipo.int/ Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the UDRP. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. UDRP, paragraph 4(b). Numerous prior decisions under the UDRP have found bad faith where, as here, the complainant has satisfied the first two elements of the UDRP and the disputed domain name is used in connection with a website that offers content similar to the goods or services associated with the complainant's trademark. See, e.g., Burlington Networks Inc. v. Tope Lawal, WIPO Case No. D2005-0974 ("[w]hile offering competitive services online is certainly not prohibited by the Policy, Respondent's further selection of a domain name containing Complainant's trademark is clearly evidence of bad faith"); Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 ("Respondent's diversion of traffic to… a website offering goods and services competing with those of [complainant], is also indicative of bad faith pursuant to Sections 4(b)(iii) and (iv) of the Policy"); and Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (finding bad faith "where… links [on respondent's website] are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy"). Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.

Discussion and Findings

Pursuant to the UDRP, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. UDRP, paragraph 4(a).

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which [it] has rights."

Based on the information provided by Complainant, the Panel is convinced that Complainant has rights in the trademark SUBLIME DIRECTORY.

As to whether the Disputed Domain Name is identical or confusingly similar to the trademark SUBLIME DIRECTORY, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "sublimedirectories"), as it is well-established that the top-level domain name (i.e., ".com") should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 ("[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address").

In this case, it is apparent that the relevant portion of the Disputed Domain Name is merely the plural form of the relevant trademark. Numerous prior decisions under the UDRP have found confusing similarity in such instances. See, e.g., Research In Motion Limited v. Georges Elias, WIPO Case No. D2009-0218 (finding "blackberries" in disputed domain names "virtually identical to the Complainant's [BLACKBERRY] mark"); Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061 (finding <crowntrophies.com> confusingly similar to the trademark CROWN TROPHY); and Sally Holdings, Inc. v. Registrant, WIPO Case No. D2004-1059 (finding <sallysbeautysupplies.com> confusingly similar to the trademark SALLY BEAUTY SUPPLY).

Similarly here, the Panel concludes that the Disputed Domain Name <sublimedirectories.com> is confusingly similar to Complainant's SUBLIME DIRECTORY trademark and, accordingly, Complainant has proven the first element of the UDRP.

B. Rights or Legitimate Interests

Complainant alleges that, inter alia, "Respondent is making neither a legitimate nor a noncommercial or fair use of" the Disputed Domain Name because Respondent is using the Disputed Domain Name to "compete with Complainant by attracting internet traffic that was otherwise destined to arrive at <sublimedirectory.com>, but that is misdirected to the Respondent's website." The Panel confirms that the website using the Disputed Domain Name as shown in an exhibit to the Complaint indeed contains content related to adult entertainment, which is similar to content on Complainant's website using the domain name <sublimedirectory.com> and also among the services listed in Complainant's federal trademark registration for SUBLIME DIRECTORY.

Under the UDRP, "'a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP'." Christian Dior Couture v. Versata Software, Inc., WIPO Case No. D2009-0102 (quoting "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", paragraph 2.1, http://arbiter.wipo.int/

Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the UDRP.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. UDRP, paragraph 4(b).

Numerous prior decisions under the UDRP have found bad faith where, as here, the complainant has satisfied the first two elements of the UDRP and the disputed domain name is used in connection with a website that offers content similar to the goods or services associated with the complainant's trademark. See, e.g., Burlington Networks Inc. v. Tope Lawal, WIPO Case No. D2005-0974 ("[w]hile offering competitive services online is certainly not prohibited by the Policy, Respondent's further selection of a domain name containing Complainant's trademark is clearly evidence of bad faith"); Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 ("Respondent's diversion of traffic to… a website offering goods and services competing with those of [complainant], is also indicative of bad faith pursuant to Sections 4(b)(iii) and (iv) of the Policy"); and Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (finding bad faith "where… links [on respondent's website] are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy").

Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.

Decision
For the reasons set out above, the Complaint is	Accepted
and the disputed domain name(s) is(are) to be
SUBLIMEDIRECTORIES.COM	Transferred to Redfan of Panama, Inc.

Panellists
Name	Douglas M. Isenberg
Date of Panel Decision	2009-10-31

Annexes
Annex: English summary of the Panel Decision
Pursuant to the UDRP, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. UDRP, paragraph 4(a). A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which [it] has rights." Based on the information provided by Complainant, the Panel is convinced that Complainant has rights in the trademark SUBLIME DIRECTORY. As to whether the Disputed Domain Name is identical or confusingly similar to the trademark SUBLIME DIRECTORY, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "sublimedirectories"), as it is well-established that the top-level domain name (i.e., ".com") should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 ("[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address"). In this case, it is apparent that the relevant portion of the Disputed Domain Name is merely the plural form of the relevant trademark. Numerous prior decisions under the UDRP have found confusing similarity in such instances. See, e.g., Research In Motion Limited v. Georges Elias, WIPO Case No. D2009-0218 (finding "blackberries" in disputed domain names "virtually identical to the Complainant's [BLACKBERRY] mark"); Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061 (finding <crowntrophies.com> confusingly similar to the trademark CROWN TROPHY); and Sally Holdings, Inc. v. Registrant, WIPO Case No. D2004-1059 (finding <sallysbeautysupplies.com> confusingly similar to the trademark SALLY BEAUTY SUPPLY). Similarly here, the Panel concludes that the Disputed Domain Name <sublimedirectories.com> is confusingly similar to Complainant's SUBLIME DIRECTORY trademark and, accordingly, Complainant has proven the first element of the UDRP. B. Rights or Legitimate Interests Complainant alleges that, inter alia, "Respondent is making neither a legitimate nor a noncommercial or fair use of" the Disputed Domain Name because Respondent is using the Disputed Domain Name to "compete with Complainant by attracting internet traffic that was otherwise destined to arrive at <sublimedirectory.com>, but that is misdirected to the Respondent's website." The Panel confirms that the website using the Disputed Domain Name as shown in an exhibit to the Complaint indeed contains content related to adult entertainment, which is similar to content on Complainant's website using the domain name <sublimedirectory.com> and also among the services listed in Complainant's federal trademark registration for SUBLIME DIRECTORY. Under the UDRP, "'a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP'." Christian Dior Couture v. Versata Software, Inc., WIPO Case No. D2009-0102 (quoting "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", paragraph 2.1, http://arbiter.wipo.int/ Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the UDRP. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. UDRP, paragraph 4(b). Numerous prior decisions under the UDRP have found bad faith where, as here, the complainant has satisfied the first two elements of the UDRP and the disputed domain name is used in connection with a website that offers content similar to the goods or services associated with the complainant's trademark. See, e.g., Burlington Networks Inc. v. Tope Lawal, WIPO Case No. D2005-0974 ("[w]hile offering competitive services online is certainly not prohibited by the Policy, Respondent's further selection of a domain name containing Complainant's trademark is clearly evidence of bad faith"); Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 ("Respondent's diversion of traffic to… a website offering goods and services competing with those of [complainant], is also indicative of bad faith pursuant to Sections 4(b)(iii) and (iv) of the Policy"); and Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (finding bad faith "where… links [on respondent's website] are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy"). Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.

Annexes

Annex: English summary of the Panel Decision

Publication of the Decision
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