PH4 Corporation v. Keyword Marketing Inc.
Claim Number: FA0712001119345
Complainant is PH4 Corporation (“Complainant”), represented by Abby
C. Moskovitz, of Dobrusin & Thennisch, PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delwebb.org>, registered with Domaindoorman, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2007.
On December 20, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <delwebb.org> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2008, Complainant filed an Additional Submission containing documentation of the assignment of rights to the mark here in issue alleged in its Complaint.
On February 1, 2008, 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 is a licensor of Del Webb Corporation, which builds adult communities for people aged 55 and older.
As part of the marketing for their business, Complainant operates a website under the domain name <delwebb.com>.
Del Webb Corporation assigned the DEL WEBB mark to Complainant, effective February 1, 2002.
Del Webb Corporation registered the DEL WEBB service mark with the United States Patent and Trademark Office (“USPTO”) on April 25, 2000 (Reg. No. 2,345,498).
Respondent registered the <delwebb.org> domain name on November 27, 2005.
Respondent’s disputed domain name resolves to a website which displays links to websites for Complainant’s competitors.
Respondent’s <delwebb.org> domain name is substantively identical to Complainant’s DEL WEBB mark.
Respondent does not have any rights to or legitimate interests in the <delwebb.org> domain name.
Respondent registered and uses the <delwebb.org> 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 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 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 has established rights in the DEL WEBB mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with USPTO. See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008):
Complainant asserts rights
in the mark through its registration of the mark with the
Respondent’s <delwebb.org> domain name is substantively identical to Complainant’s DEL WEBB mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain name fully incorporates the DEL WEBB mark, while the addition of a top-level domain such as “.org” is irrelevant when considering whether a disputed domain name is identical to a competing mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
See also 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.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interest in the <delwebb.org> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it nonetheless does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See, for example, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to 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”).
Complainant has established a prima facie case for purposes of the Policy. And, because of Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights or legitimate interest 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).
However, we will examine the record to determine if there is any basis for concluding that Respondent has rights or interests in its domain name sufficient to satisfy the requirements of Policy ¶ 4(c).
In this connection, we first observe that Respondent does not deny the allegation that is using the <delwebb.org> domain name to operate a website containing links to websites which directly compete with Complainant’s business. Respondent’s use of a domain name that is substantively identical to Complainant’s mark to divert Internet users to Complainant’s competitors 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 fair use of the disputed domain name 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links that complainant’s competitors was not a bona fide offering of goods or services).
Additionally, we note that both the record and the pertinent WHOIS information indicate no evidence suggesting that Respondent is commonly known by the <delwebb.org> domain name. Also, there is no evidence in the record demonstrating that Respondent is authorized to use Complainant’s mark. Thus, Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that 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 thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny that it is using the <delwebb.org> domain name in bad faith, pursuant to Policy ¶ 4(b)(iv), by using Complainant’s DEL WEBB mark to attract Internet users to a website containing links to Complainant’s competitors for which Respondent presumably receives click through fees. Such conduct is evidence that Respondent is attempting to profit by giving the impression of being affiliated with Complainant. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to a complainant’s services); 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.
In addition, it appears that Respondent registered the <delwebb.org> domain name with at least constructive knowledge of Complainant’s rights in the DEL WEBB service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
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 <delwebb.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 8, 2008
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