Shamir Optical Industry Ltd., and Shamir Insight, Inc. v. Zahav.net Inc.
Claim Number: FA0907001273984
Complainant is Shamir Optical Industry Ltd., and Shamir Insight, Inc. (“Complainant”), represented by Gordon I. Endow, of Gordon & Rees LLP, California, USA. Respondent is Zahav.net Inc. (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shamir.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret), Chair, Anne M. Wallace, and M. Kelly Tillery as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2009.
On July 15, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <shamir.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 July 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 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@shamir.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (ret), Chair, Anne M. Wallace, and M. Kelly Tillery 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 <shamir.com> domain name is identical to Complainant’s SHAMIR mark.
2. Respondent does not have any rights or legitimate interests in the <shamir.com> domain name.
3. Respondent registered and used the <shamir.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The Panel finds for the 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.
The
Panel finds that the relevant date Complainant has acquired rights in a mark
that has a federal trademark registration is the application filing date. The Panel further finds that Complainant has
sufficiently established rights in the SHAMIR mark under Policy ¶ 4(a)(i) dating
back to the February 17, 1998 filing date through its registration of the
SHAMIR mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,407,597 issued November 28, 2000 filed February 17, 1998). See 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)); see
also Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights
in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”).
Respondent’s
<shamir.com> domain name contains Complainant’s entire SHAMIR mark
and adds the generic top-level (“gTLD”) “.com.”
The Panel finds that the addition of a gTLD is irrelevant for the
purpose of a Policy ¶ 4(a)(i) analysis.
The Panel finds that the <shamir.com> domain name is
identical to Complainant’s SHAMIR mark under Policy ¶ 4(a)(i). See Treeforms, Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s
<treeforms.com> domain name is identical to the complainant’s TREEFORMS
mark); see also W. Union Holdings, Inc.
v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical
to the complainant’s mark because the generic top-level domain (gTLD) “.com”
after the name WUIB is part of the Internet address and does not add
source-identifying significance).
The Panel finds that the Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. Complainant satisfies its burden, the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information for the
<shamir.com> domain
name lists “Zahav.net Inc.” as
the registrant. Complainant alleges that
Respondent does not conduct business under the <shamir.com> domain name or the SHAMIR mark. The Panel agreed with Respondent’s
allegation, and finds that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). 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 Am. Online, Inc. v. World Photo Video &
Imaging Corp., FA 109031 (Nat.
Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by
<aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and
“World Photo Video & Imaging Corp.”).
Complainant asserts that Respondent’s <shamir.com> domain name resolves to a website that features hyperlinks to unrelated third-party websites. Complainant further asserts that Respondent is receiving click-through fees for displaying these hyperlinks The Panel agrees with Complainant’s assertions, and 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name
Complainant argues that Respondent is using the <shamir.com> domain name to generate click-through fees from
displaying hyperlinks to unrelated third-party websites on the resolving
website. The Panel agrees, and finds
that Respondent’s conduct constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain
Name My Be For Sale, FA
857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the
disputed domain name to maintain a pay-per-click site displaying links
unrelated to the complainant and to generate click-through revenue suggested
bad faith registration and use under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking
advantage of the confusing similarity between the <lilpunk.com> domain
name and the complainant’s LIL PUNK mark by using the contested domain name to
maintain a website with various links to third-party websites unrelated to
Complainant, and that such use for the respondent’s own commercial gain
demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <shamir.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon.
Nelson A. Diaz (Ret.), Chair
Anne M. Wallace, and M. Kelly Tillery, Panelists
Dated: September 11, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page