First Active plc v. First Active group c/o Hans
Claim Number: FA0709001082281
Complainant is First Active
plc, (“Complainant”) represented by James A. Thomas, of Parker,
Poe, Adams & Bernstein LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firstactiveresources.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 26, 2007; the Forum received a hard copy of the Complaint on September 27, 2007.
On September 28, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the Forum that the domain names <firstactiveresources.com> is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry 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 October 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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@firstactiveresources.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <firstactiveresources.com> domain name is confusingly similar to Complainant’s FIRST ACTIVE mark.
2. Respondent does not have any rights or legitimate interests in the <firstactiveresources.com> domain name.
3. Respondent registered and used the <firstactiveresources.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, First Active, offers a range of mortgages,
savings, investments, pensions, and life insurance products in the
Respondent registered the <firstactiveresources.com> domain name on March 15, 2007. Respondent previously used the disputed domain name to fraudulently obtain private information from Complainant’s customers. Currently, the disputed domain name is not being actively used.
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.
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 has shown trademark registration information for
the FIRST ACTIVE mark with the Irish Patent Office. The Panel finds that this registration
establishes Complainant’s rights pursuant to 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 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.").
Respondent’s <firstactiveresources.com> domain name is confusingly similar to Complainant’s FIRST ACTIVE mark as it includes the entire mark along with the generic word “resources.” The addition of this word does not negate the confusion over the connection between the disputed domain name and Complainant’s business. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Respondent’s <firstactiveresources.com> domain name also adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names. The Panel thus finds that the <firstactiveresources.com> domain name is confusingly similar to the Complainant’s FIRST ACTIVE mark under Policy ¶ 4(a)(i). See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <firstactiveresources.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Once Complainant has shown a prima facie case, however, the burden of proof then shifts to Respondent. The Panel finds Complainant has met its burden in this case. 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 respond to the Complaint allows the Panel to assume that Respondent has no rights or legitimate interests in the disputed domain name. See 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.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nonetheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests exist Policy ¶ 4(a)(ii).
Although Respondent’s WHOIS information indicates that
Respondent is “First Active group c/o Hans,” there is no other evidence in the
record to suggest that Respondent is commonly known by the <firstactiveresources.com> domain
name. Furthermore, Complainant has
asserted that Respondent is not licensed or otherwise authorized to use the
FIRST ACTIVE mark and is not connected to Complainant in any way. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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);
see also Starwood Hotels
& Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb.
Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent
as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name,
there is no evidence before the Panel that Respondent was actually commonly
known by that name.”).
Respondent’s previous use of the disputed domain name to gain private information fraudulently from Complainant’s customers is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds that such use does not evidence rights and legitimate interests in the <firstactiveresources.com> domain name under Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Moreover, the <firstactiveresources.com> domain name does not currently resolve to any active website. This non-use of the disputed domain name further indicates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
The Panel finds that the Policy ¶ 4(a)(ii) has been satisfied.
The Panel assumes that Respondent benefited commercially
from the website that resolved from the <firstactiveresources.com>
domain name. Therefore, Respondent
was attempting to attract, for commercial gain, Internet users who may be
confused as to Complainant’s affiliation with the website. Such use is evidence of Respondent’s bad
faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also 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.”).
Moreover, Respondent previously used the <firstactiveresources.com> domain name to fraudulently obtain confidential information from Complainant’s customers. The Panel finds that this also qualifies as bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Finally, the Panel finds that Respondent’s bad faith registration and use of the <firstactiveresources.com> domain name under Policy ¶ 4(a)(iii) is also evidenced by its current non-use of the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) the respondent failed to use the domain name and (2) it is clear that the respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstactiveresources.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: November 12, 2007
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