Claim Number: FA0711001107959
Complainant is Avanquest
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elibrium.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2007.
On November 9, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <elibrium.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has an expansive offering of computer software for small offices.
Complainant has registered the ELIBRIUM trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,507,248, issued November 13, 2001).
The <elibrium.com> domain name was originally registered by Complainant on August 18, 2000.
In or after 2003, upon expiration of Complainant’s registration, Respondent registered the disputed domain name.
The disputed domain name redirects Internet users to a website featuring advertisements in direct competition with the business of Complainant.
Respondent has been a respondent in
numerous UDRP proceedings in which disputed domain names were transferred from
it to various complainants. See
Brookdale Senior Living, Inc. v.
Respondent’s <elibrium.com> domain name is substantively identical to Complainant’s ELIBRIUM mark.
Respondent does not have any rights to or legitimate interests in the <elibrium.com> domain name.
Respondent registered and uses the <elibrium.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the ELIBRIUM trademark with the USPTO establishes its rights under 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.”
Respondent’s <elibrium.com> domain name is identical to Complainant’s ELIBRIUM mark inasmuch as it incorporates the mark in its entirety and merely adds the generic top-level domain “.com.” The addition of “.com” is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. Therefore, the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to a complainant’s NIKE mark); 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 a domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the <elibrium.com> domain name. Complainant has the burden of proof for this issue pursuant to Policy ¶ 4(a)(ii). However, once Complainant has made out a prima facie showing, the burden of proof shifts to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that 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. Clerical-medical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has met its burden under this heading. Respondent’s failure to respond to the Complaint allows us to presume Respondent has no rights or legitimate interests in the <elibrium.com> 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 there is any basis for concluding that Respondent has legitimate rights or interests under Policy ¶ 4(c).
We first observe in this connection that the record contains nothing to suggest that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Nor is there any evidence that Respondent is licensed or authorized by Complainant to use the disputed ELIBRIUM mark. And the pertinent WHOIS information does not identify Respondent as being affiliated with the mark. We therefore conclude that Respondent has no rights or legitimate interests to the <elibrium.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
We also note that there is no dispute that Respondent is using the <elibrium.com> domain name to divert Internet users to third-party websites offering services similar to that of Complainant’s business conducted under the ELIBRIUM mark. We may presume that Respondent uses the domain name for monetary gain by capitalizing on the good reputation of Complainant’s mark. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services).
We next consider Complainant’s uncontested allegation to the effect that Respondent registered the disputed domain name following the registration of Complainant lapsed. This is additional evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003):
Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).
See also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”).
The Panel thus finds that the Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent uses the <elibrium.com> domain name to operate a website that displays links in competition with Complainant’s business. This creates a likelihood of confusion as to Complainant’s possible sponsorship of or affiliation with Respondent’s website. We may presume that Respondent benefits financially from this confusion. Such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).
Additionally, Respondent does not
deny Complainant’s allegation that Respondent has been a respondent in numerous
UDRP proceedings in which disputed domain names were transferred from it to various
complainants. See Brookdale
Senior Living, Inc. v.
Finally under this heading, we take cognizance of the uncontroverted allegation that Respondent registered the disputed domain name upon the lapse of Complainant registration. This constitutes further evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000):
Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.
See also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that a complainant’s prior registration and use of a disputed domain name and a respondent’s registration of that domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <elibrium.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 12, 2007
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