DECISION

 

Carol E. Colbert d/b/a Cables N Mor v. Mark Nothstine

Claim No.: FA0107000098409

 

PARTIES

The Complainant is Carol E. Colbert, d/b/a/ Cables N Mor, Sterling, VA (“Complainant”).  The Respondent is Mark Nothstine, Eustis, FLA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <cablesnmore.com>, registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and has no known conflict in serving as a panelist in this proceeding.

 

Hon. H. Curtis Meanor, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 23, 2001; the Forum received a hard copy of the Complaint on July 25, 2001.

 

On July 26, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <cablesnmore.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2001 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 @cablesnmore.com by e-mail.

 

A timely response was received and determined to be complete on August 20, 2001.

 

On August 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed H. Curtis Meanor as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.  Complainant contends that the domain name <cablesnmore.com> registered on July 28, 1997 by Hurricane Computer and transferred to Respondent on July 18, 2001 is confusingly similar to the trademark <cablesnmor.com> registered to her on September 5, 1996.

 

B.  Respondent contends that he is not infringing Complainant’s common law rights since he and she operate in different states.  He also asserts that his registered mark used in good faith to describe his business which is competitive with that of Complainant.

 

FINDINGS

Complainant conducts her business under the trade name “Cables N Mor”.  This is an unregistered mark, protected only by the common law.  She began to use her registered mark, “cablesnmor” in December, 1996, began to receive orders thereunder in January, 1997 and has been doing so ever since.

 

Respondent does business under the name “Hurricane Computer Products”.  Both parties are in the business of selling computer cables and accessories.

 

When one clicks on <cablesnmor.com>, Complainant’s web site appears showing credit and billing information, instructions for placing orders, a list of products for sale and their prices.

 

When one clicks on <cablesnmore.com> Respondent’s web site shows up with the same information for his Hurricane Computer Products business.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 Complaint 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 or Confusingly Similar

Complainant asserts common law rights to the “CABLES N MOR” trademark based on Complainant’s use of the trademark in connection with its business since as early as as November 1996.  The Panel is satisfied with Complainant’s assertion of rights to the mark despite the lack of government registration.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain  Name Dispute Rsolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

 

Complainant asserts that the <cablesnmore.com> domain name is confusingly similar to its CABLES N MOR mark.  The domain name contains Complainant’s entire mark and adds an “e” to the end of the dominant portion before the TLC.  The Panel finds that this misspelling is insufficient to defeat a claim of confusing similarity.  See, e.g., Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

 

Additionally, the Panel finds that the cablesnmore.com domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

 

Rights and Legitimate Interests 

Complainant asserts that Respondent has no rights or legitimate interests in the <cablesnmore.com> domain name because Respondent was not using a corresponding name to conduct business prior to registering the infringing domain name.  The Panel concludes that a Respondent lacks rights and legitimate interests when a Respondent is not commonly known by a domain name pursuant to Policy ¶4 (c) (ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

Complainant further asserts that Respondent is using the <cablesnmore.com> domain name intentionally to mislead and divert consumers away from Complainant and to tarnish Complainant’s mark in conflict with the provisions of Policy ¶4 (c) (iii).  The Panel determines that Respondent lacks rights and legitimate interests because of its competitive use of the disputed domain name.  E.g., Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

 

Registration and Use in Bad Faith 

Complainant asserts that the <cablesnmore.com> domain name was registered and is being used in bad faith.  The Panel concludes that registration of an infringing domain name with knowledge of Complainant’s mark is evidence of bad faith registration.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

 

Complainant asserts that Respondent uses the <cablesnmore.com> domain name in bad faith within the meaning of Policy ¶4(b)(iv) because Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the products on Respondent’s website.  The Panel determines this meets the criteria established for bad faith use.  E.g., TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

 

Complainant further contends that Respondent intentionally registered the <cablesnmore.com> domain name to disrupt a competitor’s business pursuant to Policy ¶4(b)(iii).  The Panel concludes that this is sufficient for a finding of bad faith.  See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it “obvious” that the domain names were registered for the primary purpose of disrupting the competitor’s business when the parties are part of the same, highly specialized field).

 

DECISION

For the reasons set forth above, it is ordered that the domain name at issue- <cablesnmore.com> – be transferred from Respondent to Complainant.

 

 

HON. H. CURTIS MEANOR, Panelist

 

DATED:September 12, 2001