Balfourclassrings.com, Keystoneclassrings.com

The timeline behind balfourclassrings.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Commemorative Brands, Inc. v. Manila Industries, Inc. Claim Number: FA0605000709096 PARTIES Complainant is Commemorative Brands, Inc. (“Complainant”), represented by Sheri R. Hunter, of Jackson Walker L.L.P., 100 Congress Avenue, Suite 1100, Austin, TX 78701. Respondent is Manila Industries, Inc. (“Respondent”), 3843 S. Bristol St. #628, Santa Ana, CA 92704. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <balfourclassrings.com> and <keystoneclassrings.com>, registered with Compana, 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. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 19, 2006. On May 23, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <balfourclassrings.com> and <keystoneclassrings.com> domain names are registered with Compana, Llc and that Respondent is the current registrant of the names. Compana, Llc has verified that Respondent is bound by the Compana, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 20, 2006 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 Respondent's registration as technical, administrative and billing contacts, and to postmaster@balfourclassrings.com and postmaster@keystoneclassrings.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <balfourclassrings.com> and <keystoneclassrings.com> domain names are confusingly similar to Complainant’s BALFOUR and KEYSTONE marks. 2. Respondent does not have any rights or legitimate interests in the <balfourclassrings.com> and <keystoneclassrings.com> domain names. 3. Respondent registered and used the <balfourclassrings.com> and <keystoneclassrings.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Commemorative Brands, Inc., holds registered trademarks with the United States Patent and Trademark Office (“USPTO”) for both the BALFOUR (Reg. No. 1,373,682 issued December 3, 1985) and the KEYSTONE (Reg. No. 1,398,462 issued June 24, 1986; Reg. No. 1,805,999 November 23, 1993) marks. Complainant uses these marks to provide high quality commemorative jewelry, including rings, necklaces and pins, to schools, colleges, fraternities, sororities, corporations and institutions. Complainant’s best-known products are high school and college graduation rings. Respondent registered the <keystoneclassrings.com> domain name on January 4, 2005, and registered the <balfourclassrings.com> domain name on December 6, 2005. Respondent is using both domain names to redirect Internet users to websites featuring links to third-party websites, some of which offer goods and services competing with Complainant, specifically class rings, while others offer unrelated goods and services, such as gambling websites and dating services. Presumably, Respondent receives pay-per-click referral fees from these third-party websites. 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 has established rights in its BALFOUR and KEYSTONE marks by virtue of registration with the USPTO. The Panel finds that such registration is sufficient to establish Complainant’s rights in its marks pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Respondent’s <balfourclassrings.com> and <keystoneclassrings.com> domain names are confusingly similar to Complainant’s BALFOUR and KEYSTONE marks. Respondent’s domain names incorporate Complainant’s marks in their entirety and add the descriptive term “classrings,” which is a clear reference to Complainant’s line of business. The Panel finds that such minor additions do not negate the confusing similarity between the disputed domain names and Complainant’s marks for the purposes of Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has asserted that Respondent lacks rights or legitimate interests in the <balfourclassrings.com> and <keystoneclassrings.com> domain names. Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to show that it has rights or legitimate interests in the disputed domain names as outlined in Policy ¶ 4(a)(ii). The Panel may consider Respondent’s failure to submit a Response as evidence that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will evaluate the available evidence to ascertain whether or not the Respondent has rights or legitimate interests under Policy ¶ 4(c). Respondent is using the <balfourclassrings.com> and <keystoneclassrings.com> domain names, which are confusingly similar to Complainant’s BALFOUR and KEYSTONE marks, to redirect Internet users to Respondent’s websites. Respondent’s websites present Internet users with a myriad of links to third-party websites, some of which offer competing goods and services, while others offer unrelated goods and services. Respondent presumably receives pay-per-click referral fees from these third-party websites. Such use does not constitute 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Further, there is no available evidence to indicate that Respondent is commonly known by either the <balfourclassrings.com> or <keystoneclassrings.com> domain name. Complainant asserts that it has not licensed Respondent to use the disputed domain names and that Respondent is not affiliated with, or sponsored by, Complainant in any way. Additionally, Respondent’s WHOIS information identifies Respondent as “ Manilla Industries, Inc.,” a name wholly unrelated to either the <balfourclassrings.com> domain name or <keystoneclassrings.com> domain name. Thus, respondent is clearly not known by the disputed domain names and has failed to establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is using its <balfourclassrings.com> and <keystoneclassrings.com> domain names to redirect Internet users to its websites offering links to numerous third-party websites. Many of these third-party websites offer goods and services in direct competition with Complainant. By using domain names confusingly similar to Complainant’s marks to redirect Internet users to links for Complainant’s competitors, Respondent is disrupting Complainant’s business. Such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Respondent’s <balfourclassrings.com> and <keystoneclassrings.com> domain names are confusingly similar to Complainant’s BALFOUR and KEYSTONE marks to such an extent that Internet users seeking Complainant’s business could easily be redirected to Respondent’s websites. The confusing similarity could also cause Internet users to believe that Respondent’s websites, which feature links to both competing and unrelated third-party websites, are sponsored by, or affiliated with, Complainant. Respondent is presumably profiting from this confusion by receiving pay-per-click referral fees from the third-party websites listed on its website. Such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <balfourclassrings.com> and <keystoneclassrings.com> domain names be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: July 5, 2006 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.