Robin Reigi Inc. v. Registrant email@example.com +1.25255572
Claim Number: FA0708001065185
Complainant is Robin Reigi Inc. (“Complainant”), represented by Omid
A Mantashi, of Law Offices of Omid A. Mantashi,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robinreigi.com>, registered with Onlinenic, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 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.
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. Respondent’s <robinreigi.com> domain name is identical to Complainant’s ROBIN REIGI mark.
2. Respondent does not have any rights or legitimate interests in the <robinreigi.com> domain name.
3. Respondent registered and used the <robinreigi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Robin Reigi Inc., is a New York-based
architectural resource company that specializes in providing innovative
materials and processes to the architectural and design industry. Among other things, Complainant has built
advanced materials libraries for companies such as General Motors and
Nickelodeon for use in various promotional projects. Complainant has been using the ROBIN REIGI
mark in connection with its business since 2001 and the mark has become
well-known and respected in the architectural and design industry. Complainant has a pending service mark
application with the United States Patent and Trademark Office (“USPTO”) for
the ROBIN REIGI mark (Serial No. 77,246,423 filed
Soon after Complainant’s registration of the disputed domain
name lapsed, Respondent registered the <robinreigi.com>
domain name 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 is not required to own a trademark registration
in order to establish rights in the ROBIN REIGI mark pursuant to Policy ¶
4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050
Complainant asserts common law rights in the ROBIN REIGI mark through its continuous and extensive use of the mark in connection with its architectural resource business since 2001. The Panel finds that Complainant has become well-known and respected as a provider of material research to the architectural and design communities and has used the ROBIN REIGI mark extensively to promote and market its business. Complainant’s pending trademark application with the USPTO also indicates its rights in the mark. Moreover, Complainant’s previous possession of the <robinreigi.com> domain name is additional evidence of Complainant’s rights in the mark. Therefore, the Panel finds that the ROBIN REIGI mark has acquired secondary meaning sufficient to establish Complainant’s common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Suburban Ostomy Supply Co. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the [disputed] domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark pursuant to Policy ¶ 4(a)(i).”).
domain name is identical to Complainant’s ROBIN REIGI mark, as it
duplicates the mark in its entirety, merely omitting the space between the two
words in the mark and adding the generic top-level domain (“gTLD”) “.com” to
the mark. Because spaces are
impermissible in domain names and because a top-level domain is required of all
domain names, these changes do not render the disputed domain name distinct
from Complainant’s mark. Thus, the Panel
finds that the <robinreigi.com> domain
name is identical to Complainant’s ROBIN REIGI mark under Policy ¶
4(a)(i). See Fed’n
of Gay Games, Inc. v. Hodgson,
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied
Under Policy ¶ 4(a)(ii), once Complainant has established a prima facie case to show that Respondent lacks rights and legitimate interests in the <robinreigi.com> domain name, the burden shifts to Respondent to refute this showing. 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 lacks rights and legitimate interests in the
disputed domain name. See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum
Complainant asserts that Respondent is not commonly known by
the <robinreigi.com> domain
name, which indicates a lack of rights and legitimate interests under Policy ¶
4(c)(ii). The Panel agrees with this
assertion, as neither Respondent’s WHOIS information, nor anything else in the
record, suggests that Respondent is known by the disputed domain name, and
Complainant has never permitted Respondent to use its ROBIN REIGI mark. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the <robinreigi.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain name to display a
website that features links to third-party websites, some of which offer goods
and services in direct competition with Complainant, and the Panel infers that
Respondent earns click-through fees from these links. Such use constitutes neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii) and further indicates Respondent’s lack of rights or legitimate
interests in the <robinreigi.com> domain
In addition, Complainant previously owned the <robinreigi.com> domain name, yet inadvertently allowed its registration to lapse. Respondent’s subsequent registration of the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
domain name, which is identical to Complainant’s ROBIN REIGI mark,
redirects Internet users, presumably seeking Complainant’s goods and services,
to a website displaying links to Complainant’s competitors. Such use constitutes a disruption of
Complainant’s business and indicates Respondent’s bad faith registration and
use of the disputed domain name under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
The Panel also finds evidence of bad faith registration and use in that Respondent is attracting Internet users to a links page by creating the likelihood that users will be confused as to Complainant’s source and affiliation with the <robinreigi.com> domain name and the corresponding website. As the Panel presumes that this attraction results in commercial benefit for Respondent, it qualifies as bad faith registration and use 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 Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Furthermore, Respondent’s registration of the <robinreigi.com> domain name soon
after Complainant allowed its registration to lapse also qualifies as bad faith
registration and use under Policy ¶ 4(a)(iii).
See InTest Corp. v. Servicepoint,
FA 95291 (Nat. Arb. Forum
The Panel thus 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 <robinreigi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 9, 2007
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