Charmian
Claim Number: FA0708001054998
Complainant is Charmian Harvey Totalmédia inc 111 Duke,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <passeportsanté.net> and <passeportsanté.com>, registered with Dynadot, LLC.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 3, 2007, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the PUNYCODE equivalent of the <passeportsanté.net> domain name [<xn--passeportsant-nhb.net>] and the PUNYCODE equivalent of the <passeportsanté.com> domain name [<xn--passeportsant-nhb.com>] are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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@passeportsanté.net and postmaster@passeportsanté.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <passeportsanté.net> domain name is identical to Complainant’s PASSEPORTANTÉ.NET mark and Respondent’s <passeportsanté.com> domain name is confusingly similar to Complainant’s PASSEPORTANTÉ.NET mark.
2. Respondent does not have any rights or legitimate interests in the <passeportsanté.net> and <passeportsanté.com> domain names.
3. Respondent registered and used the <passeportsanté.net> and <passeportsanté.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Charmian Harvey, operates Passportsanté.net, a
Canadian non-profit health information website.
In connection with the provision of these services, Complainant has
registered the PASSEPORTANTÉ.NET
mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No.
TMA671059 issued
The <passeportsanté.net> domain name is an internationalized domain name (“IDN”) with the Punycode translation of <xn--passeportsant-nhb.net>. The <passeportsanté.com> domain name is an IDN with the Punycode translation of <xn--passeportsant-nhb.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or non-Latin characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as Punycode.
Respondent
registered the disputed domain names on
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.
Complainant asserts rights in the PASSEPORTANTÉ.NET mark through registraion with the CIPO. The Panel finds that Complainant’s timely registration of the PASSEPORTANTÉ.NET mark sufficiently establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In
the past, panels have found IDNs and their Punycode translations to be
equivalent. See Württembergische
Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that
the <xn--wrttembergische-versicherung-16c.com> should be considered as
equivalent to the <württembergische-versicherung.com> domain name, based
on previous panel decisions recognizing the relevance of I-nav software for
translating German letters such as “ä” or “ü” into codes such as
<xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and
Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be
an exact reproduction of Complainant’s Chinese trademark in a domain
name). As a result, the Panel finds that
the <passeportsanté.net> domain name is one and the
same with its Punycode translation, <xn--passeportsant-nhb.net>
and the <passeportsanté.com>
domain name is one and the same with its Punycode translation, <xn--passeportsant-nhb.com>,
for purposes of this
proceeding.
Respondent’s <passeportsanté.net> contains Complainant’s mark in its entirety. Respondent’s <passeportsanté.com> domain name differs from Complainant’s registered mark by replacing the generic top-level domain (“gTLD”) “.net” with the gTLD “.com.” The Panel finds that the mere replacement of a gTLD in an otherwise identical mark fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Nevada 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.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that this Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy.
The disputed domain names resolve to commercial search engine websites whereupon unsuspecting Internet users are provided links to websites of Complainant’s competitors in the health information industry. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Complainant asserts that Respondent is not commonly known by the disputed domain names. A review of Respondent’s WHOIS registration information reveals that the registrant of the <passeportsanté.net> and <passeportsanté.com> domain names is “Matt Karrar c/o Dynadot Privacy.” Respondent has failed to furnish this Panel any evidence to indicate that it is or has been commonly known by the disputed domain names. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As indicated above, Respondent’s disputed domain names resolve to websites featuring links to the websites of Complainant’s competitors. The Panel finds that such use constitutes a disruption of Complainant’s business and evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
Presumably, Respondent enjoys financial remuneration through its diversionary use of the disputed domain names in the form of click-through advertising fees. Therefore, the Panel finds that Respondent’s use amounts to an attraction for commercial gain, thereby illustrating registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <passeportsanté.net> [<xn--passeportsant-nhb.net>] and <passeportsanté.com> [<xn--passeportsant-nhb.com>] domain names be TRANSFERRED from Respondent to Complainant.
Dated: October 9, 2007
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