Rhino Linings USA, Inc. v. St Kitts Registry
Claim Number: FA0708001055139
Complainant is Rhino Linings USA, Inc. (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins Riley &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rhinolining.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2007.
On August 13, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <rhinolining.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the RHINO LININGS mark (including Reg. No. 1,910,469, issued August 8, 1995 and Reg. No. 2,682,202, issued February 4, 2003).
Complainant has used the RHINO LININGS mark in connection with the production and sale of protective, spray-on linings for use in a variety of commercial applications, including for vehicles and truck beds.
Complainant uses the RHINO LININGS mark in connection with the distribution of its goods and products through over 1,400 retail dealers and with retail accounts spreading across sixty countries.
Respondent registered the <rhinolining.com> domain name on April 15, 2004.
The domain name was formerly owned by one of Complainant’s authorized dealers.
Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, which operates as a click-through site by displaying links to websites featuring products such as “Sprayed on Liners” and “Pickup Bed Liners,” both of which compete with those sold by Complaint under the RHINO LININGS mark.
Respondent’s <rhinolining.com> domain name is confusingly similar to Complainant’s RHINO LINGINGS mark.
Respondent does not have any rights or legitimate interests in the <rhinolining.com> domain name.
Respondent registered and uses the <rhinolining.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the RHINO LININGS mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (holding that where a complainant had trademark registrations with the USPTO, “[t]he Panel had no difficulty in finding that Complainant has established rights in the marks for purposes of Policy ¶ 4(a)(i)”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant asserts that Respondent’s <rhinolining.com> domain name is confusingly similar to Complainant’s RHINO LININGS mark inasmuch as it uses the mark in its entirety but for the omission of the “s” from the word “linings” and addition of the generic top-level domain (“gTLD”) “.com” to the mark. The addition of a gTLD is irrelevant to the determination of whether a mark is confusingly similar. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Likewise, omission of the letter “s” from the mark does not sufficiently alter the mark so as to avoid a finding of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark, thus rendering a disputed domain name confusingly similar to it).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <rhinolining.com> domain name. Complainant’s submission establishes a prima facie case on this issue, which shifts the burden from Complainant to Respondent to show that Respondent has rights in the disputed domain name under Policy ¶ 4(a)(ii). See, for example, Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007):
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
To the same effect, see also Caterpillar Inc. v. Ravo, FA 991824 (Nat. Arb. Forum July 9, 2007).
Because Respondent failed to respond to the Complaint, we are entitled presume that Respondent does not have rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, we will nonetheless review the available evidence to determine if there is any basis for concluding the Respondent has rights or legitimate interests in the <rhinolining.com> domain name under Policy ¶ 4(c).
We first note in this connection that Complainant alleges, and Respondent does not deny, that Respondent uses the <rhinolining.com> domain name to redirect Internet users to Respondent’s website, which displays links to third-party websites competing with the business of Complainant. Such use is not a use in connection with 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which resolved to sites operated by that complainant’s competitors, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that a respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with a complainant, was not a bona fide offering of goods or services).
Further, Respondent has offered no evidence, and none is present in the record, to indicate that Respondent is commonly known by the <rhinolining.com> domain name. Indeed Respondent’s WHOIS information identifies Respondent as “St. Kitts Registry.” We therefore conclude that Respondent has failed to establish rights or legitimate interests in the mark under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already noted that Respondent has registered and is using the domain name <rhinolining.com>, which is confusingly similar to Complainant’s RHINO LININGS mark, to redirect Internet users to Respondent’s website, which displays links to competing third-party websites. We may presume that it does this for commercial profit. Internet users seeking Complainant’s goods under the RHINO LININGS mark may become confused as to the possibility of Complainant’s endorsement, affiliation or sponsorship of Respondent’s website. We conclude that such use by Respondent is evidence of 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 AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s took advantage of Internet users’ mistakes and used its domain name to resolve to a website offering links to third-party websites offering services similar to those of a complainant).
In addition, it appears that Respondent registered the <rhinolining.com> domain name with at least constructive knowledge of Complainant’s rights in the RHINO LININGS trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <rhinolining.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 2, 2007
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