New America Network, Inc. v. Wellborn Commercial Real Estate
Claim Number: FA0809001224594
Complainant is New America Network, Inc. (“Complainant”), represented by Nancy
R. Frandsen, of Woodcock Washburn,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <naitaiwan.com>, registered with Dotregistrar.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2008.
On September 15, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <naitaiwan.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 September 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 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@naitaiwan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15,, 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 leading national network of more than 300 commercial real estate firms.
Complainant has used the NAI mark in association with its real estate services since 1997.
Complainant has a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the NAI mark (Reg. No. 2,199,582, issued October 27, 1998).
Respondent is neither commonly known by the <naitaiwan.com> domain name nor licensed to register domain names using the NAI mark.
Respondent registered the <naitaiwan.com>
domain name
on August 28, 2001.
Respondent’s domain name resolves to a blank website.
Respondent’s <naitaiwan.com> domain name is confusingly similar to Complainant’s NAI mark.
Respondent does not have any rights to or legitimate interests in the <naitaiwan.com> domain name.
Respondent registered and uses the <naitaiwan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to 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 registered the NAI service mark with the USPTO, and thus has established rights to the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant alleges that Respondent’s <naitaiwan.com> domain name is confusingly
similar to Complainant’s NAI mark pursuant to Policy ¶ 4(a)(i). The disputed domain name contains
Complainant’s mark in its entirety, and merely adds the geographic location “
[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 .
. . .
See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, under Policy ¶ 4(a)(i),
Respondent’s <naitaiwan.com> domain name is confusingly
similar to Complainant’s NAI mark.
Complainant contends that Respondent lacks rights to and legitimate interests in the <naitaiwan.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, as it has in this instance, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the contested domain name pursuant to Policy ¶ 4(a)(ii). Likewise, Respondent’s failure to respond to the allegations of the Complaint permits us to conclude that it lacks rights or interests cognizable under the Policy. 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).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
However, we will examine the record against the applicable Policy ¶ 4(c) elements before making a final determination with regard to Respondent’s rights and legitimate interests in the contested domain name, if any there be.
We first note in this connection that Complainant contends, and Respondent does not deny, that Respondent is neither commonly known by the <naitaiwan.com> domain name nor licensed to register domain names using the NAI mark. Consistent with this, Respondent’s WHOIS information identifies Respondent as “Real Estate, Wellborn yenyen@ms9.tisnet.net.tw,” which offers no suport for the proposition that Respondent is commonly known by the disputed domain name. On this record, we are constrained to conclude that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” 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 there in question).
We also observe that there is no dispute as to Complainant’s allegation to the effect that Respondent has failed to make an active use of the disputed domain name. Likewise there is no evidence of record to suggest that Respondent intends actively to use the disputed domain name. As a result, we are comfortable in concluding that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use by means of the disputed domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to a complaint and made no use of the domain name there in issue); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in a domain name where there was no proof that a respondent made preparations to use the domain or one like it in connection with a bona fide offering of goods or services before receiving notice of a domain name dispute, and where the domain name did not resolve to a website and that respondent was not commonly known by the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <naitaiwan.com> domain name but has not actively used it. Such inactive use consitutes bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding an infringing domain name without active use can constitute use in bad faith).
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 <naitaiwan.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 20, 2008
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