National Gardening
Association Inc. v.
Claim Number: FA0907001274880
PARTIES
Complainant is National
Gardening Association Inc. (“Complainant”), represented by Shapleigh Smith,
Jr., of Dinse, Knapp & McAndrew, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalgardeningassociation.com>, registered with Compana, LLC.
PANEL
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.
Dawn Osborne of Palmer Biggs Legal.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2009.
On July 22, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <nationalgardeningassociation.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 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@nationalgardeningassociation.com by e-mail.
A timely Response was received and determined to be complete on August 20, 2009.
On enter date appointed, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant's contentions can be summarized as follows:
Complainant's Trademarks: Complainant began using the trademarks NATIONAL
GARDENING ASSOCIATION (
Respondent's Disputed Domain Name and Website: Respondent registered the domain name <nationalgardeningassociation.com> (the "Disputed Domain Name") with Compana, LLC on May 2, 2005. (See Whois search results for <nationalgardeningassociation.com>, attached hereto as Exhibit 3.
Respondent's website associated
with the Disputed Domain Name does not offer any goods or services. It contains
hyperlinks to other pages, which in turn contain hyperlinks to various
websites, including those of Complainant's competitors.
Respondent may earn click-through fees or other remuneration from providing hyperlinks to Complainant's competitors' websites.
Complainant's Cease and Desist
Efforts: After learning of Respondent's registration of the Disputed Domain
Name, Complainant first contacted Respondent in October 2007, requesting
Respondent to cease and desist its use of the Disputed
Domain Name. Respondent responded that it would refer the matter to counsel,
but Complainant did not receive any communication from Respondent's counsel.
Complainant again contacted Respondent in December 2007. Respondent
subsequently indicated it would consent to the transfer of the Disputed Domain
Name, but then Respondent failed to follow through, despite Complainant's several
requests that it do so. Most recently, Complainant sent Respondent a cease and
desist letter on May 28, 2009. Complainant conveyed to Respondent its concern
that the Disputed Domain Name is identical or confusingly similar to
Complainant's Trademarks, and its understanding that Respondent does not have a
legitimate interest in the domain name. Complainant offered to pay Respondent
for the administrative costs incurred in registering the Disputed Domain Name
if Respondent would immediately transfer the Disputed Domain Name to
Complainant. On June 3, 2009, Respondent replied that it would not transfer the
Disputed Domain Name because that domain name "was created on May 2, 2005,
approximately three (3) years before the dates of the Section 8 and 15 filings
for the marks NATIONAL GARDENING ASSOCIATION (Reg. No. 2,614,789) and NATIONAL GARDENING
ASSOCIATION (Reg. No. 2,614,791)."
From February 2007 to the date of this filing, Respondent has been a respondent in approximately 152 domain name disputes before the NAF, and NAF panels have concluded that the disputed domain names registered by Respondent should be transferred or cancelled in 135 of those actions.
[a.] The Disputed Domain Name Is
Identical Or Confusingly Similar To Complainant's Trademarks.
The Disputed Domain Name is identical or confusingly similar to trademarks in which
Complainant has rights. ICANN
Policy ¶ 4(a)(i). Here, the Disputed Domain Name
consists entirely of Complainant's Trademarks NATIONAL GARDENING ASSOCIATION
followed by ".com." The top level domain ".com" "is
not considered in making this determination." See Alive Hospice, Inc. v.
[b.] Respondent Has No Rights Or Legitimate Interests In Respect Of The
Disputed
Domain Name.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
First, Respondent has not been commonly
known by the Disputed Domain Name or by the mark NATIONAL GARDENING
ASSOCIATION. Nothing in the WHOIS information for the Disputed Domain Name
implies that Respondent is commonly known by that domain name. See Edible
Arrangements, LLC v.
NA, FA 1252321 (Nat. Arb. Forum May 4, 2009) (determining that respondent did not have rights or legitimate interests with respect to domain name where it was not commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA139720 (Nat. Arb. Forum Feb. 10, 2003) (noting that the WHOIS information is one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Second, Respondent has no
relationship with Complainant and has no authorization to use Complainant's trademarks.
See Edible Arrangements, LLC v.
Third, before Respondent received
notice of this dispute, Respondent had not used or made demonstrable
preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Respondent's website associated with the Disputed Domain Name merely contains
hyperlinks to other pages, which in turn contain hyperlinks to various websites,
including those of Complainant's competitors. Respondent may earn click-through
fees or other remuneration from providing hyperlinks to Complainant's
competitors' websites. See UnitedHealth Group Inc. v. Total Net Solutions, FA 1204916
(Nat. Arb. Forum Aug. 4, 2007) ("Previous panels have inferred
commercial or financial incentive on the part of a respondent when the disputed
domain name resolves to, displays links to, or advertises products or services
that compete with those offered by the complainant."). This website is not
a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Alive Hospice, Inc. v.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
[c.] Respondent Has Registered And Used The Disputed Domain Name
In Bad Faith.
Respondent has registered and used the Disputed Domain Name in bad faith by: (1) using it in order to prevent Complainant from reflecting the mark in a corresponding domain name, where Respondent has engaged in a pattern of such conduct, in violation of Policy ¶ 4(b)(ii); (2) registering the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, in violation of Policy ¶ 4(b)(iii); and (3) using the Disputed Domain Name for the purpose of intentionally attempting to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's Trademarks, in violation of Policy ¶ 4(b)(iv).
1. Respondent has registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct, in violation of Policy ¶ 4(b)(ii).
Respondent repeatedly has
registered domain names containing trademarks of other complainants, those
other complainants have brought UDRP actions against Respondent, and in 135
cases to date, 89% of all the cases brought, NAF panels have ordered the transfer
or cancellation of Respondent's domain names. These previous actions demonstrate
Respondent's pattern of registering domain names to prevent the owners of the trademarks
from reflecting the marks in corresponding domain names, in violation of ICANN Policy
¶ 4(b)(ii). See Hewlett-Packard
Co. v.
2. Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, in violation of Policy ¶ 4(b)(iii).
Respondent's use of the Disputed
Domain Name diverts Internet customers seeking Complainant's website to
Respondent's website, which links to pages containing hyperlinks to Complainant's
competitors. (See Exhibit
4.) This conduct constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iii). See IMT Servs. Corp.
v.
3. Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, in violation of Policy ¶ 4(b)(iv).
The fact that the website
associated with the Disputed Domain Name links to Complainant's competitors,
and that Respondent likely receives compensation for such links (see supra), evidences
Respondent's bad faith registration and use of the Disputed Domain Name. See
Alive Hospice, Inc. v.
Further, Respondent has used Complainant's Trademarks in their entirety in the Disputed Domain Name without justification. Respondent knew or should have known of
Complainant's rights in Complainant's Trademarks as those marks were registered with the U.S. Patent and Trademark Office at the time Respondent registered the Disputed Domain Name. Respondent's use of a disputed domain name that is confusingly similar with Complainant's Trademarks is an attempt to profit from the goodwill associated with
Complainant's marks, and it constitutes bad faith registration and use in violation of Policy ¶ 4(b)(iv). See Horizon Hobby, Inc. v. Lambert, FA 1176662 (Nat. Arb. Forum May 28, 2008).
Respondent's actions show that its registration and use of the Disputed Domain Name was in bad faith.
B. Respondent
The Respondent's contentions can be summarised as follows:
The Respondent agrees to the relief requested by the Complainant and offers unilateral consent to transfer.
Where the Complainant has sought transfer of the domain name and the Respondent consents then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer.
The Respondent requests that the Panel order the immediate transfer of the domain name.
FINDINGS
The Complainant is the owner of US Registered Trade Marks for NATIONAL GARDENING ASSOCIATION and has been using the mark in commerce since 2000.
The Respondent registered the Domain Name on May 2, 2005 and now requests that it be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Panelist's opinion is that the Complainant has rights in a trade mark that is identical to the Domain Name for the purposes of the Policy and that the Respondent has no legitimate interest in the name and has used it in bad faith.
However, it has been held that in circumstances such as this where the Respondent has not contested the transfer of the Domain Name and agrees to transfer the Domain Name to the Complainant, the Panel may decide to forego the lengthy traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). The Panel also notes that the Respondent has received the benefit of legal advice. As such the Panel will order the transfer of the Domain Name to the Complainant.
DECISION
Having established all three elements required under the ICANN Policy and having reviewed the Complainant’s request for relief and the Respondent’s consent to that relief with legal advice the Panel concludes that relief shall be GRANTED.
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 <nationalgardeningassociation.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne of
Palmer Biggs Legal, Panelist
Dated: September 9, 2009
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