Incredimail, LTD v. ITWEB Domain Protection
Claim Number: FA0809001226284
Complainant is Incredimail, LTD (“Complainant”), represented by Sidney
D. Bluming, of Bluming Freiman Franco, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <incredimail-2008.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2008.
On September 26, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <incredimail-2008.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 October 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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@incredimail-2008.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <incredimail-2008.org> domain name is confusingly similar to Complainant’s INCREDIMAIL mark.
2. Respondent does not have any rights or legitimate interests in the <incredimail-2008.org> domain name.
3. Respondent registered and used the <incredimail-2008.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Incredimail, LTD,
develops and markets software programs including electronic mail, personal
calanders, group scheduling, personal information management, and sharing of
documents. Complainant has registered
the INCREDIMAIL mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,750,783 issued Aug. 12, 2003) for use in connection with
the provision of these goods and services.
Respondent registered the <incredimail-2008.org> domain name on August 4, 2008. Respondent’s domain name resolves to a website that contains pictures and content that is substantially similar to Complainant’s own website. In addition, Respondent obtains Complainant’s products for free from Complainant and sells these products to Internet users without authorization from 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 has shown rights in the INCREDIMAIL mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <incredimail-2008.org> domain name is
confusingly similar to Complainant’s INCREDIMAIL mark. Respondent’s domain name contains
Complainant’s mark in its entirety and adds a hyphen, the year “2008,” and the
generic top-level domain “.org.” The
Panel finds that neither of these distinctions are significant enough to
detract from the dominant portion of the domain name, namely Complainant’s
mark. As a result the Panel finds that
Respondent’s <incredimail-2008.org>
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <incredimail-2008.org> domain name. In instances where a complainant has made a prima facie case, the burden shifts to the respondent to set forth evidence that it does possess rights or legitimate interests in the disputed domain name. The Panel finds that, in the instant case, Complainant has made a prima facie case under Policy ¶ 4(a)(i). 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 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).”).
Complainant contends that Respondent is using the <incredimail-2008.org> domain name to sell Complainant’s products in competition with Complainant. More specifically, Respondent is obtaining Complainant’s products from Complainant for free and then selling Complainant’s products to Internet users for Respondent’s own commercial gain. The Panel finds that Respondent’s use of the disputed domain name is not 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Moreover, Respondent’s website duplicates substantial portions of Complainant’s own website and passes itself off as Complainant. Such use of the <incredimail-2008.org> domain name is further evidence of a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is a blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).
Complainant further contends that Respondent is not commonly
known by the <incredimail-2008.org>
domain name. The WHOIS information for
the disputed domain name lists the registrant as “ITWEB Domain Protection.” The Panel
finds that without evidence to the contrary, Respondent is not commonly known
by the <incredimail-2008.org> domain name under 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum Sept. 25, 2003) (finding that without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using the <incredimail-2008.org> domain name to operate a website that is identical in substantial part to Complainant’s own website and that sells Complainant’s products without authorization in competition with Complainant. The Panel finds this to be a disruption of Complainant’s business and that Respondent has engaged in bad faith in registering and using the <incredimail-2008.org> domain name under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant contends that the website resolving from Respondent’s <incredimail-2008.org> domain name prominently displays Complainant’s INCREDIMAIL mark and substantially replicates the content of Complainant’s own website. What is more, Respondent offers Internet users Complainant’s software for sale. Internet users will likely be confused as to the source and sponsorship of Respondent’s website. The Panel finds that Respondent is attempting to capitalize on this confusion. As a result, Respondent has registered and used the <incredimail-2008.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <incredimail-2008.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 11, 2008
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