NIHC, Inc. and Nordstrom,
Inc and Nordstrom, Fsb, d/b/a Nordstrom Bank v. Privacy Ltd. Disclosed Agent
for YOLAPT c/o Domain Admin
Claim Number: FA0808001220714
PARTIES
Complainant is NIHC, Inc. and Nordstrom,
Inc and Nordstrom, Fsb d/b/a
Nordstrom Bank (“Complainant”),
represented by William O. Ferron, Jr. of
Seed Intellectual Property Law
Group PLLC, Seattle, Washington, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain
Admin (“Respondent”), represented by Maria
Bergsten of Renova, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nordstrombankcard.com>, registered
with Fabulous.com
Pty Ltd.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically August 14, 2008; the
National Arbitration Forum received a hard copy of the Complaint August 18, 2008.
On August 18, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <nordstrombankcard.com> domain name
is registered with Fabulous.com Pty Ltd.
and that Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement
and thereby has 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@nordstrombankcard.com
by e-mail.
A timely Response was received and determined to be complete on September 17, 2008.
On September 25, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
Preliminary Issue: Consent
to Transfer
Respondent consents to transfer the <nordstrombankcard.com> domain name to Complainant. However, after the initiation of this proceeding, Fabulous.com Pty Ltd. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel must determine in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, whether to forego the traditional UDRP analysis and order an immediate transfer of the <nordstrombankcard.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Here,
Complainant has not implicitly consented in its Complaint to the transfer
of the disputed domain name without a
decision on the merits by the Panel. The
Panel finds that the “consent-to-transfer” approach is a way for cybersquatters
to avoid adverse findings against them.
In Graebel Van Lines, Inc. v.
Respondent has admitted in his response
to the complaint of Complainant that it is ready to offer the transfer without
inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel
is of the view that the transfer of the disputed domain name deserves to be [sic]
along with the findings in accordance with the Policy.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this proceeding:
1.
The
domain name that Respondent registered is identical to or confusingly similar
to a mark in which Complainant has exclusive rights.
2.
Respondent
has no rights to or legitimate interests in the domain name containing
Complainant’s protected mark.
3.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
makes the following points in Response.
1.
Respondent
purchased the domain name “in a large portfolio” in an agreement in which
Respondent received warranties and representations that the domain names “were
not in violation of the intellectual property rights of any third party.”
2.
Respondent
“registered and uses the Domain in good faith.”
3.
Respondent
consents to the voluntary transfer of the domain name but will not pay
Complainant’s costs.
4.
The
Panel should transfer the domain name without findings.
5.
Respondent
did not register the domain name in bad faith.
6.
Respondent
“has no desire to hold this Domain Name.”
FINDINGS
Complainant established rights in the mark by registration with the
appropriate authorities.
The domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed
domain name.
Respondent registered and used the domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires Complainant to 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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 United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,280,785 issued June 5, 1984). The Panel finds that Complainant established rights in the mark for purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant
contends that the domain name that Respondent registered, <nordstrombankcard.com>, is confusingly
similar to Complainant’s NORDSTROM mark.
Respondent’s domain name contains Complainant’s mark in its entirety and
adds the generic terms “bank” and “card.”
The Panel also finds that the addition of generic terms to an otherwise
unchanged mark does not sufficiently distinguish a domain name from a known
mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic
Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the
respondent’s domain names, which incorporated the complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see
also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Respondent
makes no allegations with regards to Policy ¶ 4(a)(i)
but consents to the transfer.
The
Panel finds that Complaint satisfied the elements of ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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. 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 <nordstrombankcard.com>
domain name to host a web page
containing links to credit card and financial services websites in competition
with Complainant’s own services. The evidence before the Panel permits the inference
that Respondent is receiving click-through fees for each redirected Internet
user. The Panel further finds that
Respondent is not using the <nordstrombankcard.com>
domain name in connection with a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Yahoo!
Inc. v. Web Master, FA 127717 (Nat.
Arb. Forum Nov. 27, 2002) (finding that the respondent’s
use of a confusingly similar domain name to operate a pay-per-click search
engine, in competition with the complainant, was not a bona fide
offering of goods or services); 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).
Complainant also contends that Respondent is not
commonly known by the <nordstrombankcard.com>
domain name or licensed to register
names featuring the NORDSTROM mark. The Panel finds that Respondent failed to
sufficiently establish that it is commonly known by the <nordstrombankcard.com> domain name and, as a result, failed to establish
rights or legitimate interests under Policy ¶ 4(c)(ii). See 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); see also Foot
Locker Retail, Inc. v. Gibson,
FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s
FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information
reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not
‘commonly known by’ any of the disputed domain names prior to their
registration, and concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”).
Respondent
makes no allegations with regards to Policy ¶ 4(a)(ii)
and consents to the transfer.
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the <nordstrombankcard.com> domain name to host a web page containing links to websites offering credit card and other financial services that compete with Complainant. The evidence before the Panel permits the inference that Respondent is profiting from such use through the collection of click-through fees for each redirected Internet user. The Panel finds that this use constitutes a disruption of Complainant’s business and therefore supports findings 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 Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Moreover, Complainant contends that Respondent’s manner of use of the <nordstrombankcard.com> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds that such use also supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent
makes no allegations with regards to ICANN Policy ¶ 4(a)(iii)
but consents to the transfer.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nordstrombankcard.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 9, 2008.
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