ESI International v.
Claim Number: FA0707001045411
Complainant is ESI International (“Complainant”), represented by Kathryn
M. Starshak of Bell Boyd & Lloyd LLP, P.O. Box
1135, Chicago, IL, 60690-1135.
Respondent is Belize Domain WHOIS Service Lt (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <esiintl.com>, registered with Intercosmos Media Group, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 25, 2007; the National Arbitration Forum received a hard copy of the Complaint July 26, 2007.
On July 27, 2007, Intercosmos Media Group, Inc. confirmed by e-mail to the National Arbitration Forum that the <esiintl.com> domain name is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2007, 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@esiintl.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <esiintl.com>, is confusingly similar to Complainant’s ESI INTERNATIONAL mark.
2. Respondent has no rights to or legitimate interests in the <esiintl.com> domain name.
3. Respondent registered and used the <esiintl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ESI International, is a
Respondent registered the <esiintl.com> domain name July 19, 2005. Respondent’s disputed domain name resolves to a website featuring links to various third-party websites, some of which offer services in direct competition with Complainant’s project management services.
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 will draw such inferences as the Panel considers to be 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 Complainant to 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.
The Panel finds that Complainant’s registration of the ESI INTERNATIONAL mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.”).
Complainant first alleges that Respondent’s <esiintl.com> domain name is confusingly similar to Complainant’s ESI INTERNATIONAL mark. The Panel agrees, as the disputed domain name only varies from Complainant’s mark in that it abbreviates the word INTERNATIONAL to “intl.” Previous panels have found, and this Panel so finds, that abbreviating a word in a mark does not negate any confusing similarity between the mark and a disputed domain name. Moreover, the addition of the generic top-level domain “.com” is irrelevant to a finding of confusing similarity under Policy ¶ 4(a)(i) because a top-level domain is a required element of all domain names. Thus, the Panel finds that the <esiintl.com> domain name is confusingly similar to Complainant’s ESI INTERNATIONAL mark pursuant to Policy ¶ 4(a)(i). See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant next alleges that Respondent lacks rights and legitimate interests in the <esiintl.com> domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving this allegation, and then the burden shifts to Respondent once Complainant has made a prima facie case. The Panel finds that, in the present case, Complainant made a prima facie showing under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint allows the
Panel to presume that Respondent has no rights or legitimate interests in the
disputed domain name. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the
Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with
the rules ‘as it considers appropriate.”); 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.”).
However, the Panel examines the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Complainant asserts that
Respondent is not commonly known by the <esiintl.com>
domain name, which indicates its lack of rights and legitimate interests
under Policy ¶ (c)(ii). The Panel finds that nothing in the record
suggests that Respondent is commonly known by the disputed domain name.
Respondent’s WHOIS information does not indicate, that Respondent is commonly
known by the disputed domain name.
Moreover, Respondent is not a licensee of Complainant’s ESI
INTERNATIONAL mark and is not otherwise authorized to use Complainant’s mark. The Panel finds that Respondent lacks rights
and legitimate interests in the <esiintl.com>
domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The disputed domain name that Respondent registered, <esiintl.com>, resolves to a website featuring links to websites in direct competition with Complainant. The Panel presumes that Respondent earns click-through fees when Internet users click on these links. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate, noncommercial or fair use under Policy ¶ 4(c)(iii). This also supports findings that Respondent lacks rights and legitimate interests in the disputed domain name. 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Lastly, Complainant alleges that Respondent registered and
is using the <esiintl.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent is using the disputed domain name
to redirect Internet users to third-party websites in direct competition with
Complainant. The Panel finds that such
use constitutes a disruption of Complainant’s business and qualifies as bad
faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”).
As mentioned previously, the Panel presumes that Respondent benefits commercially when Internet users click on the links featured on the website that resolves from the <esiintl.com> domain name. Thus, the Panel finds that Respondent is attempting to attract, for financial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s ESI INTERNATIONAL mark as to the source, sponsorship, or affiliation with the disputed domain name. This is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <esiintl.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 12, 2007.
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