American Communications Network, Inc. v. Versata Hostmaster c/o Versata Software, Inc.
Claim Number: FA0903001253057
Complainant is American
Communications Network, Inc. (“Complainant”), represented by Anup M. Chah, of Moore & Van Allen
PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myacncanada.com>, registered with Red Register, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 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@myacncanada.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 <myacncanada.com> domain name is confusingly similar to Complainant’s ACN mark.
2. Respondent does not have any rights or legitimate interests in the <myacncanada.com> domain name.
3. Respondent registered and used the <myacncanada.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Communications Network, Inc., is a
world leader in telecommunication services.
Complainant uses the ACN mark in association with its telecommunication
services and video phone sales.
Complainant owns a number of trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the ACN mark (i.e. Reg. No.
2,337,694 issued
Respondent registered the <myacncanada.com> domain name on
Respondent has a
history of registering domain names infringing upon the trademark rights of
others, and has been ordered by previous UDRP panels to transfer the disputed
domain names to the respective complainants.
See Heald College, LLC v. Versata
Software, Inc., D2008-1875 (WIPO,
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 established rights in the ACN mark pursuant
to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See
Enter. Rent-A-Car Co. v. Language Direct,
FA 306586 (Nat. Arb. Forum
Complainant argues that Respondent’s <myacncanada.com> domain name is confusingly similar to
Complainant’s ACN mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s ACN mark in its entirety, adds the generic term “my” and the
geographic term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the <myacncanada.com> domain name.
When Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that in this case, Complainant has established a prima facie case. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register domain names using
the ACN mark. Respondent’s WHOIS information identifies Respondent as “Versata
Software, Inc.” The Panel finds that
Respondent’s failure to respond to the Complaint and the WHOIS information
demonstrate that Respondent is not commonly known by the disputed domain
name. Therefore, pursuant to Policy ¶
4(c)(ii), Respondent lacks rights and legitimate interests in the disputed
domain name. See Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name); see
also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Respondent previously used the <myacncanada.com>
domain name to display links advertising third-party websites unrelated to
Complainant. The Panel infers that
Respondent was using the disputed domain name to earn click-through fees, and
thus finds that Respondent has not made 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
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)); Constellation
Wines
In addition, Respondent’s previous use of the <myacncanada.com> domain name displayed offers to sell the disputed domain name. The Panel finds Respondent’s apparent willingness to depart with the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Lastly, after Complainant notified Respondent of
Complainant’s rights in the ACN mark, Respondent began using the disputed
domain name to redirect Internet users to the <pornosbest.com> domain
name which contains adult-oriented materials.
The Panel finds that Respondent’s use of the disputed domain name to
redirect Internet users to a website featuring adult-oriented materials is
further evidence that Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Isleworth Land Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use
of its domain name to link unsuspecting Internet traffic to an adult
orientated website, containing images of scantily clad women in provocative
poses, did not constitute a connection with a bona fide offering of
goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum
Nov. 15, 2002) (holding that the use of a domain name that is confusingly
similar to an established mark to divert Internet users to an adult-oriented
website “tarnishes Complainant’s mark and does not evidence noncommercial or
fair use of the domain name by a respondent”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent previously used the
disputed domain name to offer the disputed domain name for sale. The Panel finds that this offer to sell the
disputed domain name, presumably in excess of the registration costs, is
further evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Am. Online, Inc.
v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum
In addition, Respondent has a long history of registering
domain names infringing upon the trademark rights of others, and has been
ordered by previous UDRP panels to transfer the disputed domain names to the
respective complainants. See
Heald College, LLC v. Versata Software, Inc., D2008-1875 (WIPO,
Respondent’s previous use of the <myacncanada.com> domain name in order to intentionally attract
Internet users to its website by creating a strong possiblity of confusion with
Complainant’s ACN mark and offering links to unrelated websites is evidence of
bad faith. The Panel infers that
Respondent received click-through fees for diverting Internet users to such
websites. Therefore, pursuant to Policy
¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes
bad faith registration and use. See 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); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be
For
Lastly, Complainant contends that Respondent’s disputed domain name currently resolves to a website offering adult-oriented materials. The Panel finds that such use of a confusingly similar disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“this association with a adult-oriented web site can itself constitute a bad faith”).
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 <myacncanada.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 7, 2009
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