Netbooks, Inc. v. Lars
Foleide
Claim Number: FA0708001069925
PARTIES
Complainant is Netbooks, Inc. (“Complainant”), represented by J.
Scott Gerien of Dickenson, Peatman & Fogarty, 809
Coombs Street, Napa, CA, 94559. Respondent is Lars Foleide (“Respondent”),
Vang, Skodje, 6260
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netbooks.biz>, registered with Enom, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically August 27, 2007; the
National Arbitration Forum received a hard copy of the Complaint August 29, 2007.
On August 28, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <netbooks.biz> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
verified that Respondent is bound by the Enom,
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 September 6, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 26, 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@netbooks.biz by e-mail.
A timely Response was received and determined to be complete on September 26, 2007.
Both parties also filed Additional Submissions that were submitted to
the Arbitrator. Complainant’s Additional Submission was filed October 1, 2007,
and was timely and filed pursuant to The Forum’s Supplemental Rule #7.
Respondent’s Additional Submission was filed October 3, 2007, and was timely
and in compliance with The Forum’s Supplemental Rule #7.
On October 3, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this proceeding:
1.
Respondent
filed a disputed domain name, <netbooks.biz>
that is identical to or confusingly similar to Complainant’s NETBOOKS mark.
2.
Respondent
has no rights to or legitimate interests in the mark and domain name containing
that mark in its entirety.
3.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
makes the following points in response:
1.
Complainant
has him confused with others.
2.
Respondent
disputes that the domain name <netbooks.biz>
is confusingly similar to Complainant’s mark.
3.
The <netbooks.biz> domain name was
registered in April 2006.
4.
Complainant
failed to show rights in the mark prior to this registration.
5.
Complainant
incorrectly claims that Respondent is receiving click-through fees and he has
not made money on his multiple domain names.
6.
Respondent
owns multiple domains with the “.biz” and “.net” designations.
7.
Respondent
did not register the domain name for its resell value because “.biz” domain
names have very low resale values, according to Respondent.
C.
Complainant
makes the following response in its Additional Submission:
1. Complainant successfully
renewed the NETBOOKS mark with the USPTO.
2. Respondent admits that the domain name is
used for click-through advertising and thus Respondent has no legitimate rights
in the domain name.
3. Respondent concedes that he is not known
by the domain name.
4. Respondent maintains sale information at
the site.
D.
Respondent’s
Additional Submission adds the following:
1.
Respondent
urges that his lack of intent to sell the <netbooks.biz> domain name is supported by the existence of his
<netspider.biz> domain name, which he registered with a long-term intent
to own the domain.
2.
Respondent
admits that he has registered a number of domain names with “net” at the
beginning of the name but not for bad faith reasons.
FINDINGS
Complainant showed rights in the NETBOOKS mark that began with registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,064,629 issued May 27, 1997).
The disputed domain name that
Respondent registered, <netbooks.biz>, is identical to
Complainant’s NETBOOKS mark because the addition of a generic top-level domain
(“gTLD”) to an otherwise identical mark does not distinguish a domain name from
a mark for purposes of Policy ¶ 4(a)(i).
Respondent registered the
<netbooks.biz> domain
name April 9, 2006.
Complainant’s trademark rights date back to the date of application,
November 20, 1995. Complainant showed a
first use in commerce date of September 30, 1995.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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.
Procedural Issue
The Panel notes that although Respondent’s electronic submission was
received in a timely manner, Respondent did not submit a hard copy as required
by ICANN Rule 5. Therefore the Panel
exercised its discretion to review the Response with a view toward determining
if substantive evidence in the Response required that weight be given to the
Response in the interest of promoting substance over procedure. See
Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight
to be given to the lateness of the response is solely in the discretion of the
panelist). The Panel reviewed the
response. See Bd. of Governors of the Univ. of Alberta v.
Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a
response which was one day late, and received before a panelist was appointed
and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469
(Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the
merits and not by default and because Complainant has not been prejudiced in
the presentation of its case by the late submission, Respondent’s opposition
documents are accepted as timely.”). But see S. Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an adequate timely filed
response, all reasonable inferences of fact in the allegations of the complaint
will be taken as true); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (refusing to accept Respondent’s deficient Response that
was only submitted in electronic form because it would not have affected the
outcome had the Panel considered it).
The Panel finds that nothing in the Response would have required a
different result from that reached by the Panel in this case.
Complainant asserts rights in the NETBOOKS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,064,629 issued May 27, 1997). As a result, the Panel finds that Complainant established rights in the NETBOOKS mark for purposes of 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 contends that
Respondent’s <netbooks.biz> domain name is
identical to Complainant’s NETBOOKS mark.
The Panel finds that the addition of a generic top-level domain (“gTLD”)
to an otherwise identical mark fails to sufficiently distinguish a domain name
from a mark for purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum
Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,”
“.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); 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).
The Panel
finds that Complainant satisfied ICANN
Policy ¶ 4(a)(i).
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). 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).
Complainant contends that Respondent is using the <netbooks.biz> domain name to operate a website featuring links to other various commercial websites, some of which offer products in competition with those legitimately offered by Complainant. This conduct supports an inference that as a result of such use, as Complainant urges, the Respondent is receiving click-through fees for each Internet user directed to a commercial website unrelated to Complainant. The Panel further finds that Respondent is not using the <netbooks.biz> domain name 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 ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that were a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites 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 pursuant to Policy ¶ 4(c)(iii)).
Moreover, Complainant contends that
Respondent is not commonly known by the <netbooks.biz> domain name and is not licensed to register names featuring the
NETBOOKS mark. The Panel finds
that Respondent failed to sufficiently establish that it is commonly known by
the <netbooks.biz> domain name and, as a result, failed to establish rights or
legitimate interests under Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec.
7, 2006) (finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant contends that
Respondent is using the <netbooks.biz> domain name to operate a website that provides links to
various websites offering products that compete with Complainant’s
business. Such conduct supports an
inference that Respondent is profiting from such use through the collection of
referral fees for each redirected Internet user. The Panel finds that such use constitutes a
disruption of Complainant’s business and is therefore evidence of bad faith
registration and use pursuant to 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 EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites).
Moreover, Complainant contends that Respondent’s manner of use of the <netbooks.biz> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. The Panel finds that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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).
Finally, Complainant contends that
Respondent registered the disputed domain name with actual or constructive
knowledge of Complainant’s rights in the well-known NETBOOKS mark. The Panel
finds that Respondent’s registration of the domain name, with actual or
constructive knowledge of Complainant’s rights, amounts to bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also
The Panel
finds that Complainant satisfied ICANN
Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netbooks.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 17, 2007.
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