Cision US Inc. v. CisionGlobal.com
Claim Number: FA0908001281354
Complainant is Cision
US Inc. (“Complainant”), represented by James
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cisionglobal.com>, registered with Wild West Domains, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 26, 2009.
On August 25, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <cisionglobal.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 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@cisionglobal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <cisionglobal.com> domain name is confusingly similar to Complainant’s CISION mark.
2. Respondent does not have any rights or legitimate interests in the <cisionglobal.com> domain name.
3. Respondent registered and used the <cisionglobal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cision US Inc., provides media relations software services and solutions for public relations professionals worldwide. Complainant began using the CISION mark in April 2007, but has offered media relations products since 1932. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CISION mark (Reg. No. 3,550,372 issued December 23, 2008).
Respondent, CisionGlobal.com, registered the <cisionglobal.com> domain name on August 9, 2009. The disputed domain name resolves to an identical version of Complainant’s <us.cision.com> website, and attempts to sell misappropriated versions of Complainant’s products.
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 Complainant has established rights in its
CISION mark under Policy ¶ 4(a)(i) through Complainant’s trademark registration
of the mark with the USPTO (Reg. No. 3,550,372 issued December 23, 2008).
The Complainant alleges Respondent’s <cisionglobal.com> domain name is confusingly similar to Complainant’s CISION mark. The disputed domain name simply adds the generic term “global” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of a generic term is insufficient in adequately differentiating a disputed domain name from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. Alexander, FA 778955 (Nat. Arb. Forum Sept. 25, 2006) (finding that adding the term “global” to the complainant’s DISNEY mark does not sufficiently distinguish the respondent’s domain name). In past decisions, panels have also found the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds Respondent’s <cisionglobal.com> domain name is confusingly similar to Complainant’s CISION mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <cisionglobal.com> domain name. Once 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 pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant alleges Respondent is attempting to pass itself
off as Complainant. Respondent’s <cisionglobal.com>
domain name resolves to a website which is identical to Complainant’s website
and attempts to sell misappropriated media relations products of Complainant. The Panel finds Respondent’s use of the
confusingly similar disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate non-commercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See Kmart of
The WHOIS information lists Respondent as “CisionGlobal.com.” However, Respondent fails to provide further evidence corroborating that Respondent is commonly known by the <cisionglobal.com> domain name. Complainant asserts that Respondent is not authorized to use the CISION mark or the <cisionglobal.com> domain name. There is no evidence, besides the WHOIS information, that would suggest Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the <cisionglobal.com> domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also 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 <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <cisionglobal.com> domain name (August 9, 2009) over a year after Complainant registered the CISION mark (December 23, 2008). Respondent is attempting to pass itself off as Complainant through Respondent’s use of a confusingly similar disputed domain name and Respondent’s resolving website. The disputed domain name resolves to a website identical to Complainant’s website. Respondent offers Complainant’s products for sale without Complainant’s authorization or permission. The Panel finds Respondent’s use of disputed domain name disrupts Complainant’s media relations business and therefore constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant alleges Respondent profits from Internet users interested in Complainant and Complainant’s media relations products. The Internet users, when looking for Complainant, may become confused as to Complainant’s affiliation with the resolving website and may purchase Complainant’s products from Respondent instead of Complainant. Thus, the Panel finds Respondent’s use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Respondent attempts to pass itself off as Complainant by using the disputed domain name to resolve to a website nearly identical to Complainant’s website and offers Complainant’s media relation products without Complainant’s permission. The Panel finds Respondent’s registration of the disputed domain name and attempt to pass itself off as Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds 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 <cisionglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 6, 2009
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