Garden State Consumer Credit Counseling Inc. v.
Claim Number: FA0802001152976
Complainant is Garden State Consumer Credit Counseling Inc. (“Complainant”), represented by Sean
W. Dwyer, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <novadebt.com>, registered with Moniker Online Services, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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 postmaster@novadebt.com 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 <novadebt.com> domain name is identical to Complainant’s NOVADEBT mark.
2. Respondent does not have any rights or legitimate interests in the <novadebt.com> domain name.
3. Respondent registered and used the <novadebt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Garden State Consumer Credit Counseling Inc.,
provides financial debt counseling and services related. Using the NOVADEBT mark, Complainant has
promoted it business for over ten years.
Complainant contends continuous use of the NOVADEBT mark since January
2001. Complainant does business
throughout the
Respondent registered the disputed 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 filed for a trademark registration with the
USPTO. However, the filing date of the
registration post-dates the registration date of the disputed domain name
registration. However it is not
necessary for Complainant to have registered trademark rights to have a
claim. See 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); see also Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
Complainant alleges common law rights in the NOVADEBT
mark. In determining common law rights,
the Panel observes that Respondent has failed to submit a Response. The Panel has chosen, therefore, to view the
Complaint in a light most favorable to Complainant. See Strum v. Nordic Net
The disputed domain name is identical to Complainant’s mark. The <novadebt.com> domain name contains the NOVADEBT mark save for the addition of the generic top-level domain “.com,” which is irrelevant under a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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 . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden to show Respondent lacks rights and legitimate interests. Once Complainant has satisfied this requirement with a prima facie showing, the burden shifts to Respondent. The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(ii). See 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”); 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).
Because Respondent failed to answer the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine if Respondent does have rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by
<novadebt.com> domain name domain name pursuant to Policy ¶ 4(c)(ii). The record
contains nothing to suggest Respondent is commonly known by disputed domain
name. The WHOIS information contains no
reference to the <novadebt.com> domain
name. Respondent is in no way licensed
or authorized to use the NOVADEBT mark.
The Panel finds that Respondent has no rights or legitimate interests to
the <novadebt.com> domain name
under Policy 4 ¶ (c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The <novadebt.com> domain name
resolves to a website containing links to competing third-party websites. The Panel presumes that Respondent is using
the domain name for monetary gain, by capitalizing on the good reputation of
Complainant’s mark. The Panel finds 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 DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see
also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the
respondent was not using the domain names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the <novadebt.com> domain name to
commercially gain by advertising links to competing services constitutes bad
faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent’s use of <novadebt.com> domain name, which is identical to Complainant’s NOVADEBT trademark, is likely to cause confusion to customers searching for Complainant’s goods and services. There may be confusion regarding Complainant’s affiliation, endorsement, or sponsorship of the links advertised on Respondent’s website. The Panel can assume Respondent is commercially benefiting from this confusion. Based on the findings, the Panel concludes the use of the <novadebt.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
Additionally, Complainant’s previous registration of the
disputed domain name constitutes Respondent’s bad faith under Policy ¶ 4(a)(iii). See InTest Corp. v.
Servicepoint, FA 95291 (Nat. Arb. Forum
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <novadebt.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
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