national arbitration forum

 

DECISION

 

Marketing Technology Solutions, Inc. v. George Slade

Claim Number: FA0905001262785

 

PARTIES

Complainant is Marketing Technology Solutions, Inc. (“Complainant”), represented by Dennis P. McCooe, of Blank Rome LLP, Pennsylvania, USA.  Respondent is George Slade (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nubella.org>, registered with eNom, 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.

 

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

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2009.

 

On May 14, 2009, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nubella.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 8, 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@nubella.org by e-mail.

 

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

 

On June 10, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nubella.org> domain name is identical to Complainant’s NUBELLA mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Marketing Technology Solutions, Inc., is the owner of the NUBELLA mark, registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,169,361 issued November 7, 2006).  The NUBELLA mark is used in conjunction with Complainant’s health and wellness goods and services.  

 

Respondent registered the disputed domain name on November 26, 2008.  The <nubella.org> domain name resolves to a parked website featuring links to goods and services in direct competition with Complainant’s business.  Additionally, the resolving website incorporates copyrighted material and information from Complainant’s <nubella.com> website.  Complainant alleges that Respondent has created a virtual clone of its <nubella.com> website.    

 

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 Complainant has established its rights in the NUBELLA mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). 

 

Complainant alleges that Respondent’s disputed domain name is identical to Complainant’s NUBELLA mark.  Respondent’s <nubella.org> domain name incorporates Complainant’s NUBELLA mark in its entirety with the addition of the generic top-level domain “.org.”  The Panel finds that generic top-level domains are required of domain names and the mere addition of “.org” is insufficient to adequately distinguish Respondent’s disputed domain name from Complainant’s mark.  See 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 the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Thus, the Panel concludes that Respondent’s <nubella.org> domain name is identical to Complainant’s NUBELLA mark under Policy ¶ 4(a)(i). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name.  Once a prima facie case has been established by Complainant, the burden then shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  The Panel finds that Complainant has adequately established a prima facie case in these proceedings.  Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  The Panel resolves to examine the record to determine whether Respondent has any relevant rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 

 

Complainant alleges that Respondent is using the <nubella.org> domain name to resolve to a website featuring links to goods and services in direct competition with Complainant.  Furthermore, Complainant contends that Respondent has incorporated Complainant’s copyrighted material on its <nubella.org> domain name in an attempt to pass itself off as Complainant.  The Panel concludes that Respondent’s use of a domain name which is identical to Complainant’s NUBELLA mark to divert Internet users to Respondent’s competing website does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did 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 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 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). 

 

Moreover, Complainant contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS information lists registrant as “George Slade,” which suggests that Respondent is not commonly known by the <nubella.org> domain name.  Respondent has failed to present any evidence to the contrary.  The Panel finds that the evidence in the record, together with the WHOIS information, establishes the conclusion that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).       

 

Complainant has satisfied Policy ¶ 4(a)(ii).           

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent has registered and is using the <nubella.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  Respondent is appropriating Complainant’s NUBELLA mark to divert Complainant’s customers to Respondent’s <nubella.org> domain name.  Additionally, the disputed domain name resolves to a website that is virtually identical to Complainant’s website, offering goods and services in competition with Complainant as well as information and material taken directly from Complainant’s <nubella.com> website.  Therefore, the Panel finds that this diversion likely disrupts Complainant’s business and establishes bad faith registration and use under Policy ¶ 4(b)(iii).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). 

 

Complainant further alleges that Respondent is intentionally attempting to attract Internet users seeking Complainant’s website to Respondent’s <nubella.org> domain name, which establishes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  Complainant’s affiliation with Respondent’s <nubella.org> domain name is likely to be a source of confusion for Internet users seeking Complainant’s <nubella.com> website.  The Panel presumes that Respondent is profiting from such use through referral fees.  Thus, the Panel concludes that Respondent’s use of the disputed domain name to attract Internet users to Respondent’s competing website which is virtually identical to Complainant’s website constitutes bad faith registration and use under 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 also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website.  Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website.  Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).   

 

Complainant 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 <nubella.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

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

Dated:  June 24, 2009

 

 

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