DECISION

 

National Federation of Independent Business v. Christopher Vanderhorst

Claim Number: FA0711001106754

 

PARTIES

Complainant is National Federation of Independent Business (“Complainant”), represented by Christopher Clark, 7770 Regents Road #113-576, San Diego, CA, 92122.  Respondent is Christopher Vanderhorst (“Respondent”), P.O. Box 35, Arcanum, OH 45304.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <nfib.us>, registered with Melbourne It Ltd.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 7, 2007; the Forum received a hard copy of the Complaint on November 16, 2007.

 

On November 11, 2007, Melbourne It Ltd confirmed by e-mail to the Forum that the domain name <nfib.us> is registered with Melbourne It Ltd and that the Respondent is the current registrant of the name.  Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on December 18, 2007.

 

On January 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nfib.us> domain name at issue is confusingly similar to Complainant’s NFIB mark.

 

2.      Respondent does not have any rights or legitimate interests in the domain name at issue.

 

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

 

B.  Respondent makes the following assertions:

 

1.  Respondent does not deny that the domain name at issue is confusingly similar to Complainant’s NFIB mark.

 

            2.  Respondent claims he has rights or legitimate interests in the domain name at issue.

 

            3.  Respondent denies that he registered the domain name at issue in bad faith.

 

FINDINGS

Complainant National Federation of Independent Business is an organization which has represented the interests of independent businesses before the federal and state executive and legislative branches of government since 1947.  In that connection, Complainant has registered its NFIB mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,971,490, issued Apr. 30, 1996).  The <nfib.us> is identical or confusingly similar to Complainant’s NFIB mark and Complainant has not licensed or otherwise authorized Respondent to use its mark to establish the domain name at issue.

 

The Respondent does not deny that the domain name at issue is essentially identical to Complainant’s mark but is using <nfib.us> a “gripe site” to voice complaints about membership dues and lack of disclosures on the part of Complainant.  There is no disclosure on the website associated with the domain name at issue that it is not in some way sponsored or authorized by the Complainant.  It does not appear that the Respondent actually objects to a transfer of the domain name at issue to Complainant but merely objects to Complainant’s resort to bringing this proceeding against him.

 

DISCUSSION

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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

Complainant has sufficiently established its rights in the NFIB mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,971,490, issued Apr. 30, 1996) 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.").

 

The <nfib.us> domain name is identical to Complainant’s NFIB mark.  The only difference between Complainant’s mark and Respondent’s disputed domain name is the addition of the country-code top-level domain (“ccTLD”) “.us.”  Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).

 

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

There is no evidence in the record that indicates that Respondent has a trademark or any other registered mark in relation to the disputed domain name.  Respondent is not the owner or beneficiary of a trademark or service mark that is identical to the disputed domain name sufficient for establishing rights in the <nfib.us> domain name pursuant to Policy ¶ 4(c)(ii).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant neither confirms nor denies that Respondent is or could be commonly known by the disputed domain name.  Nonetheless, when the Respondent’s WHOIS information provides no information inferring such, that Respondent is not commonly known by the disputed 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 UDRP ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).  There is no evidence that Respondent has rights or legitimate interests in respect of the domain name at issue.

 

            The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent has registered the <nfib.us> domain name primarily for the purpose of slander and defamation of Complainant for the purpose of disrupting Complainant’s business.  The disputed domain name is identical to Complainant’s mark and contains Complainant’s marks and logos on the website that resolves there from.  As a result, the <nfib.us> domain name was registered or is being used in bad faith to compete with and divert business from Complainant pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of UDRP ¶ 4(b)(iii)); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).

 

            The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nfib.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  January 17, 2008

 

 

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