Rhino Linings USA, Inc. v. Research Inc.
Claim Number: FA0708001066718
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 <rhinobedliner.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2007.
On August 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <rhinobedliner.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 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 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@rhinobedliner.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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. Respondent’s <rhinobedliner.com> domain name is confusingly similar to Complainant’s RHINO LININGS mark.
2. Respondent does not have any rights or legitimate interests in the <rhinobedliner.com> domain name.
3. Respondent registered and used the <rhinobedliner.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rhino Linings USA, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the RHINO LININGS mark (e.g., 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 for the distribution of its goods and products through over 1,400 retail dealers and with retail accounts spreading across sixty countries with sales exceeding over $20 million annually.
Respondent registered the <rhinobedliner.com> domain name on April 15, 2004. Respondent’s disputed domain name resolves to a website featuring links to a range of third-party websites, some of which offer services in direct competition with Complainant.
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.
The Panel finds that Complainant’s registration of the RHINO LININGS 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.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <rhinobedliner.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 will examine 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 <rhinobedliner.com> domain name 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 RHINO
LININGS mark and is not otherwise authorized to use
Complainant’s mark. The Panel finds that
Respondent lacks rights and legitimate interests in the <rhinobedliner.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, <rhinobedliner.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).
Complainant alleges that Respondent registered and is using
the <rhinobedliner.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 <rhinobedliner.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 RHINO LININGS 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 <rhinobedliner.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 4, 2007
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