Roho, Inc. v. Howard Hecht
Claim Number: FA0711001106215
Complainant is Roho, Inc. (“Complainant”), represented by Nelson
D. Nolte, 12412 Powerscourt Dr. Ste. 200, St. Louis, MO 63131. Respondent is Howard Hecht (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <roho.org>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his her 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
On November 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 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@roho.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <roho.org> domain name is identical to Complainant’s ROHO mark.
2. Respondent does not have any rights or legitimate interests in the <roho.org> domain name.
3. Respondent registered and used the <roho.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Roho, Inc., has registered its mark, ROHO, with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,165,570; issued August 18, 1981). Complainant’s first use of the ROHO mark date back to August of 1973.
Respondent registered the <roho.org> 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 has registered the ROHO mark with the
USPTO. The Panel finds that where
Complainant has submitted evidence of a valid trademark registration, Policy ¶
4(a)(i) has been satisfied. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that Respondent’s disputed domain name
is identical to Complainant’s ROHO mark.
Complainant contends that the <roho.org>
domain name contains the entirety of the ROHO mark adding only the generic
top-level domain (“gTLD”) “.org.” The
Panel notes that a gTLD is required of all domain names, and thus the disputed
domain name is identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Koninklijke
Philips Elecs. NV v. Goktas, D2000-1638 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel notes that where a Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to the Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant in the matter at hand has established such a prima facie 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 has failed to submit a response to the
Complaint. Therefore, the Panel is
entitled to presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond
means that Respondent has not presented any circumstances that would promote
its rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
by the <roho.org> domain
name. Nowhere in the WHOIS information of the disputed domain name or
elsewhere in the record does it indicate that Respondent is or ever was
commonly known by the <roho.org> domain
name. Absent
evidence suggesting otherwise, the Panel finds that Respondent has not
established rights to or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The disputed domain name, <roho.org>,
currently resolves to a website that displays Complainant’s mark and contains
links to Complainant’s competitors. The
Panel finds this to be 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 Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
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).”); see also Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name, <roho.org>,
currently resolves to a website that displays Complainant’s mark and contains
links to Complainant’s competitors. The
Panel finds that such use amounts to a disruption of Complainant’s business and
is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO
Complainant alleges that Respondent is profiting from the confusingly similar domain name by collecting pay-per-click revenue. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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).
Complainant contends that Respondent’s registration of a domain name incorporating the well known ROHO mark combined with Respondent’s repeated use of the ROHO mark on the resulting webpage had to be done with full knowledge of Complainant and Complainant’s mark. The Panel agrees and finds that Respondent’s use of the well known mark is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel concludes that Complainant has 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 <roho.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)-
Dated: December 25, 2007
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