National Council for Interior Design Qualification v. Tony Sola
Claim Number: FA0807001214033
Complainant is National Council for Interior Design Qualification (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., Washington DC, USA. Respondent is Tony Sola (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ncidq.info>, registered with Corporate Domains.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2008.
On July 8, 2008, Corporate Domains confirmed by e-mail to the National Arbitration Forum that the <ncidq.info> domain name is registered with Corporate Domains and that Respondent is the current registrant of the name. Corporate Domains has verified that Respondent is bound by the Corporate Domains 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 July 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 29, 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@ncidq.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <ncidq.info> domain name is identical to Complainant’s NCIDQ mark.
2. Respondent does not have any rights or legitimate interests in the <ncidq.info> domain name.
3. Respondent registered and used the <ncidq.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Council for Interior Design Qualification, is an association whose purpose is to protect the health, safety, and welfare of the public by establishing standards of competence in the practice of interior design. Complainant’s members are state and provincial boards in the United States and Canada that regulate the profession of interior design. Complainant administers a professional competency exam that is recognized by all U.S. states and Canadian provinces that have enacted licensing or certification statutes for interior designers. Exam candidates who meet eligibility requirement and pass the examination are awarded a NCIDQ Certificate by Complainant. Complainant also offers other programs and publications related to the interior design business for entry-level and practicing professionals. Complainant was founded in the early 1970s and has continuously offered interior design products and services for its members since that time. Complainant specifically has used its NCIDQ mark since at least April 1974 to identify its organization, products and services. Complainant has continuously operated an active website in connection with its interior design organization, products and services at the <ncidq.org> domain name since 1998. Complainant registered its NCIDQ mark with the United States Patent and Trademark Office (“USPTO”) on December 11, 2007 (Reg. No. 2,835,984).
Respondent registered the disputed domain name on September 14, 2001. The disputed domain name does not resolve to an active website.
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 provided the Panel with evidence it registered its NCIDQ mark with the USPTO. The Panel finds this registration is sufficient to establish Complainant’s rights in its NCIDQ mark pursuant to Policy ¶ 4(a)(i). 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 United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Complainant asserts it has established common law rights in its NCIDQ mark dating back to at least April 1974. Complainant has operated as an organization and continuously offered its interior design products and services under its NCIDQ mark since 1974. Complainant has maintained a presence at the <ncdiq.org> domain name where it has marketed its organization, products and services since 1998. The Panel finds Complainant has sufficiently established common law rights pursuant to Policy ¶ 4(a)(i) in its NCIDQ mark through its continuous and ongoing use of its NCIDQ mark dating back to April 1974. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); 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).
Respondent’s <ncidq.info> domain name incorporates Complainant’s NCIDQ mark with the addition of the generic top-level domain “.info.” The Panel finds the addition of a top-level domain is irrelevant for the purposes of evaluating whether a disputed domain name is identical to a mark under Policy ¶ 4(a)(i). Therefore, the Panel finds Respondent’s disputed domain name is identical to Complainant’s NCIDQ 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately
established a prima facie case. 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).”). Due to
Respondent’s failure to respond to these proceedings, the Panel may assume
Respondent does not possess rights or legitimate interests in the disputed
domain name. The Panel, however, will
examine the record to determine whether Respondent possesses rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). 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.”).
Complainant contends Respondent has not been commonly known by the disputed domain name. The WHOIS information lists Complainant as “Tony Sola,” and Complainant maintains it has never authorized Respondent to use its NCIDQ mark in any manner. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also 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).
Respondent’s disputed domain name does not resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain name is evidence Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ncidq.info> domain name does not resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain name it registered almost seven years ago is evidence Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that the respondent’s failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel finds 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 <ncidq.info> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 13, 2008
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