national arbitration forum

 

DECISION

 

Corbis Corporation v. The Domain Holding Trust of the Philipeans

Claim Number: FA0901001241649

 

PARTIES

Complainant is Corbis Corporation (“Complainant”), represented by Gianfranco G. Mitrione, of Dorsey & Whitney LLP, New York, USA.  Respondent is The Domain Holding Trust of the Philipeans (“Respondent”), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2009.

 

On January 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 January 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2009 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@corbismultimedia.com, postmaster@corbisinternational.com, and postmaster@corbisnewsservice.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names are confusingly similar to Complainant’s CORBIS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names.

 

3.      Respondent registered and used the <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Corbis Corporation, holds several registrations of the CORBIS mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,990,414 issued July 30, 1996).  Complainant registered the <corbis.com> domain name on October 11, 1994 and uses the CORBIS mark and the <corbis.com> domain name in connection with its multimedia business.  Complainant’s business consists mainly of selling file photos and other media for use by multimedia professionals.

 

Respondent registered the disputed domain names on October 12, 2007.  The disputed domain names resolve to websites listing links to third-party websites that are either unrelated or in direct competition with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that registration with the USPTO establishes Complainant’s right in the CORBIS mark pursuant to Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); 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).”).

 

The <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names add the generic words “multimedia,” “international,” and “news service” and a generic top-level domain (“gTLD”) to Complainant’s CORBIS mark.  The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Complainant is an international provider of multimedia to graphics professionals.  The terms “multimedia” and “international” have an obvious relation to Complainant’s business.  Therefore, the addition of these terms to Complainant’s CORBIS mark in the <corbismultimedia.com> and <corbisinternational.com> domain names result in confusing similarity pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).  The Panel also finds that the addition of the generic phrase “news service” to Complainant’s CORBIS mark in the <corbisnewsservice.com> domain name results in confusing similarity under Policy ¶ 4(a)(i).  See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to the complainant’s DISNEY mark because it incorporated the complainant’s entire famous mark and merely added two terms to it).

 

The Panel finds that Complaint has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”); 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the CORBIS mark, and the WHOIS information identifies Respondent as “The Domain Holding Trust of the Philipeans.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The disputed domain names are being used to direct Internet users to websites that list links to third-party websites, presumably to generate referral fees for Respondent.  Using a domain name that is confusingly similar to Complainant’s mark to direct Internet users to a list of links competing with Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds Respondent does not have any rights or legitimate interests in the disputed domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).

 

The Panel finds that Complaint has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s websites resolving from the disputed domain names consist of online directories featuring links to third-parties who purport to provide access to collections of photographs and other media in competition with Complainant.  The Panel finds Respondent is using the confusingly similar domain names to divert Internet traffic to Complainant’s competitors, thereby disrupting Complainant’s business.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

The <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names are being used to direct Internet users to pay-per-click advertising websites.  The Panel finds that Respondent registered and used the disputed domain names to deceive the public into believing that the sites are in some manner associated with Complainant.  Respondent is free riding on Complainant’s CORBIS mark to divert Internet traffic intended for Complainant and profiting from the diversion.  This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Complaint has satisfied 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 <corbismultimedia.com>, <corbisinternational.com>, and <corbisnewsservice.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  February 24, 2009

 

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