national arbitration forum




Newmont Mining Corporation v Web Services Pty c/o Aditya Roshni

Claim Number: FA0711001106525



Complainant is Newmont Mining Corporation (“Complainant”), represented by S. Brandon Owen, of Holland & Hart LLP, 60 East South Temple, Suite 2000, Salt Lake City, UT 84111.  Respondent is Web Services Pty c/o Aditya Roshni (“Respondent”), C4A/22A, Janakpuri, New Delhi, Delhi 110068, IN.



The domain name at issue is <>, registered with 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 November 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2007.


On November 8, 2007, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Inc. and that Respondent is the current registrant of the name. Inc. has verified that Respondent is bound by the 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 November 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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 by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On December 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <> domain name is confusingly similar to Complainant’s NEWMONT mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant is a mining corporation established in 1940.  Complainant provides mineral exploration products and services.  Complainant maintains an active online presence in order to promote these products and services.  Complainant has used the NEWMONT mark since at least 1925.  Since that time, Complainant has publicly traded on the New York Stock Exchange under the NEWMONT mark.  Complainant also has maintained the registered <> domain name since May 25, 1992 and has featured the NEWMONT mark in a variety of published materials including press releases, reports and presentations. 


Respondent registered the <> domain name on July 22, 2007.  Respondent is using the disputed domain name as a commercial website that advertises mining related products and services that compete with and are not affiliated 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.


Identical and/or Confusingly Similar


Under Policy ¶ 4(a)(i), Complainant is not required to have a trademark registration in order to establish rights in its mark.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also 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).


Complainant has established common law rights in the NEWMONT mark pursuant to Policy ¶ 4(a)(i) through it’s history of use of the NEWMONT mark since at least 1925 in its business through advertising, promotion and its <> domain name.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).  A Complainant is found to have rights to a mark under Policy ¶ 4(a)(i) through common law trademark rights.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).


Respondent’s <> domain name is confusingly similar to Complainant’s NEWMONT mark pursuant to ¶ 4(a)(i) because Respondent’s domain name incorporates the NEWMONT mark with a generic term describing Complainant’s business.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).  In addition, top-level domains such as “.com” are not considered in evaluating whether a domain name is confusingly similar to a mark.  See 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 . . . ."); 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 Policy ¶ 4(a)(i) has been satisfied. 


Rights or Legitimate Interests


Complainant has alleged that Respondent does not have rights or legitimate interests in the <> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has established a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).


Respondent is using the <> domain name on a website that contains links and advertisements for goods and services in direct competition with Complainant.  Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to direct users interested in Complainant’s products to a website that offers competing goods and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See 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); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).


Additionally, the record and WHOIS information indicates no evidence suggesting Respondent is commonly known by the <> domain name.  There is no evidence in the record that Respondent is authorized to use Complainant’s mark.  Thus, Respondent has not established rights or legitimate interests in the <> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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 Panel finds that Policy ¶ 4(a)(ii) has been satisfied.


Registration and Use in Bad Faith


Respondent is using the <> domain name, which is confusingly similar to Complainant’s NEWMONT mark, to direct Internet users to Respondent’s commercial website that advertises goods and services that compete with Complainant’s business.  The Panel finds that such use constitutes disruption and is 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 that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).


In addition, Respondent is using the <> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using Complainant’s NEWMONT mark to attract Internet users to a website that has links for the goods and services of Complainant’s competitors for which Respondent presumably receives click-through fees.  This conduct is evidence that the Respondent is attempting to profit by giving the impression of being affiliated with the Complainant.  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 ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).


The Panel 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 <> domain name be TRANSFERRED from Respondent to Complainant.





Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)


Dated: December 27, 2007



Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page


National Arbitration Forum