national arbitration forum




Go Modern Limited v. Go Modern c/o Domain Administrator

Claim Number: FA0903001254401



Complainant is Go Modern Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, United Kingdom.  Respondent is Go Modern c/o Domain Administrator (“Respondent”), Canada.



The domain name at issue is <>, registered with



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.


The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2009.


On March 27, 2009, confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with and that Respondent is the current registrant of the name. has verified that Respondent is bound by the 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 March 30, 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 by e-mail.


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


On April 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <> domain name is identical to Complainant’s GO MODERN mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


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



Complainant, Go Modern Limited, was incorporated in June 2006 and has since become a leading online retailer of high quality designer modern furniture under the GO MODERN mark.  Complainant predominantly trades in the United Kingdom and Ireland, but has received orders from over twenty-two countries.  Complainant has operated from its website at the <> domain name since November 2006, and offers over 500 products from seventeen suppliers.  Complainant received over £280,000 in revenue during 2007, and over £1 million during 2008. 


The <> domain name was created on July 16, 1998.  However, the domain name belonged to a different third-party until February 6, 2008, when the registrant information was altered to a domain proxy service.  On March 14, 2008, the listed registrant information was altered from the proxy service to Respondent.  Since February 6, 2008, the disputed domain name has resolved to a website with either a search engine or click-through links for the competitors of 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.


Preliminary Issue: Relevant Date of Respondent’s Registration


The WHOIS information reflects that the disputed domain name was created on July 16, 1998.  However, Complainant contends Respondent did not acquire the disputed domain name until at least February 6, 2008, under a domain name proxy service that later changed to list Respondent’s registration information on March 14, 2008.  The Panel finds the relevant date Respondent registered the disputed domain name for the purposes of the Policy is March 14, 2008.  See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (Although the disputed domain name had been created prior to the complainant obtaining rights in the mark at issue, the panel found the complainant’s rights to predate the respondent’s registration because the disputed domain name had been transferred to the respondent only a month prior to the proceeding.  “Therefore, one only needs to trace the registration date back to the most recent transfer instead of the original registration.”); see also BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it.).


Identical and/or Confusingly Similar


Complainant is not alleging a registration for its GO MODERN mark with a governmental trademark authority.  However, Complainant can still establish its rights in the mark under Policy ¶ 4(a)(i) if it can demonstrate common law rights through sufficient secondary meaning.  See Artistic Pursuit LLC v., FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).


Complainant asserts that it began using its GO MODERN mark in June 2006 when it first incorporated.  Complainant has set forth evidence that it has since used its mark for its online designer furniture retail operations, and that it has sold furniture using the <> domain name since November 2006.  Moreover, Complainant has received substantial revenue from its operations, and has taken orders from over twenty-two countries worldwide.  The Panel finds that Complainant has demonstrated common law rights in the GO MODERN mark that date back to June 2006 through sufficient secondary meaning under Policy ¶ 4(a)(i).  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).


The <> domain name contains the GO MODERN mark while removing the space and adding the generic top-level domain “.com.”  Since neither alteration carries any weight under the Policy, the Panel finds that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).


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


Rights or Legitimate Interests


Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests.  The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c).  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 Clerical Med. Inv. Group Ltd. v., 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).


The WHOIS information lists Respondent as “Go Modern c/o Domain Administrator.”  However, there is no corroborating evidence in the record that would substantiate this alleged identity.  Complainant has asserted that Respondent lacks any association with Complainant, and that Respondent is not authorized or licensed to use Complainant’s GO MODERN mark.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii), since Respondent is not commonly known by the disputed domain name.  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <> pursuant to Policy ¶ 4(c)(ii).”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).


The disputed domain name has, during Respondent’s tenure as registrant, resolved to a website that has featured either a search engine, or competitive pay-per-click links and advertisements.  The Panel finds that Respondent has satisfied neither Policy ¶¶ 4(c)(i) nor (iii), because Respondent has not endeavored to join the disputed domain name with a bona fide offering of goods or services or a legitimate noncommercial or fair use, respectively.  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).


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


Registration and Use in Bad Faith


The corresponding website for the disputed domain name, as mentioned above, displays links and advertisements for Complainant’s competitors, or has displayed a search engine in its prior history.  The Panel finds it no stretch to presume that Respondent has primarily intended to disrupt Complainant’s Internet operations for commercial gain through the pay-per-click endeavor.  This demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <> domain name constituted disruption under Policy ¶ 4(b)(iii)).


This commercial gain that Respondent obtains through the accrual of referral fees is key to the Panel’s finding that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).  Respondent’s confusingly similar disputed domain name has created a likelihood of confusion as to Complainant’s source or affiliation with the disputed domain name and corresponding website.  That this confusion yields Respondent with potential and actual monetary gain seals this finding under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).


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 <> domain name be TRANSFERRED from Respondent to Complainant.



The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 7, 2009



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