NIHC, Inc. and Nordstrom, Inc and Nordstrom, Fsb, d/b/a Nordstrom Bank v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED.
Claim Number: FA0808001220196
Complainant is NIHC, Inc.
and Nordstrom, Inc and Nordstrom, Fsb d/b/a Nordstrom Bank (collectively, “Complainant”), represented by Seed Intellectual Property
Law Group PLLC,
REGISTRAR
The domain name at issue is <nordstromvisa.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 20, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <nordstromvisa.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 August 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 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@nordstromvisa.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 <nordstromvisa.com> domain name is confusingly similar to Complainant’s NORDSTROM mark.
2. Respondent does not have any rights or legitimate interests in the <nordstromvisa.com> domain name.
3. Respondent registered and used the <nordstromvisa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nordstrom, Fsb,
d/b/a Nordstrom Bank, offers bank and credit services including credit and
debit card services through Nordstrom retail locations and online through its
<nordstromcard.com> domain name.
Complainant owns, through its affiliate and parent companies, NIHC, Inc.
and Nordstrom, Inc., numerous trademark registrations for the NORDSTROM family
of marks including a registration for the NORDSTROM mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,280,785 issued June 5, 1984).
Respondent registered the <nordstromvisa.com> domain name on June 5, 2004. Respondent’s disputed domain name resolves to a website featuring links to websites offering credit card services in competition with Complainant.
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 asserts rights in the NORDSTROM mark through
registration of the mark with the USPTO.
The Panel finds that Complainant’s trademark registration is sufficient
to establish rights under Policy ¶ 4(a)(i).
Respondent’s <nordstromvisa.com>
domain name features two unrelated trademarks, Complainant’s NORDSTROM mark and
the famous VISA mark owned by a party unrelated to the current dispute. Although the
Panel finds that Complainant seeks acquisition of the <nordstromvisa.com>
domain name in good faith, Complainant most
likely will have to forfeit its interest in the contested domain name if the holder
of the VISA mark asserts that its mark is infringed upon following a transfer
of the domain name registration to Complainant.
See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (Complainant’s continuing control of the
<viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and Complainant
will forfeit its interest in the domain name if it infringes on the other
represented marks); see also G.D. Searle
v. Dunham, FA 123901 (Nat. Arb. Forum
Complainant contends that Respondent’s <nordstromvisa.com> domain name is confusingly
similar to Complainant’s NORDSTROM mark.
Respondent’s domain name contains Complainant mark in its entirety and
adds the term “visa” along with the generic top-level domain (“gTLD”)
“.com.” The Panel finds that neither
distinction is sufficient to differentiate Respondent’s domain name from
Complainant’s mark under Policy ¶ 4(a)(i). See G.D. Searle & Co. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant has set forth a prima facie case supporting its allegations, Respondent carries the burden to show that it does have rights or legitimate interests. 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).
Complainant contends that Respondent is using the <nordstromvisa.com> domain name to operate a website containing links to several competing commercial credit card services websites. The Panel infers from its use of the disputed domain name that Respondent is collecting click-through fees for each redirected Internet user that connects to a competing website. The Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Northwest 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).”).
Moreover, Complainant contends that Respondent is not commonly known by the <nordstromvisa.com> domain name and does not own a trademark in the disputed domain name or a term featured in the disputed domain name. Respondent’s failure to respond to Complainant’s assertions leaves the Panel with no evidence to the contrary. As a result, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration
and Use in Bad Faith
Respondent is using the <nordstromvisa.com> domain name in
bad faith. Respondent’s domain name
resolves to a website featuring links to various competing commercial websites
from which Respondent presumably receives referral fees. The Panel finds such use to be evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to UDRP ¶¶ 4(b)(iii) [and] (iv).”).
Finally,
Respondent’s use is likely to cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the <nordstromvisa.com> domain name and
resulting website. Respondent is
capitalizing on this confusion by presumably collecting click-through fees for
each Internet user redirected to a competing financial services website. Respondent’s use is further evidence of 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 UDRP ¶ 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 G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
The
Panel finds that 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 <nordstromvisa.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: October 13, 2008
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