national arbitration forum

 

DECISION

 

The Voice of Nosara S.A. v. Dianne Weinert

Claim Number: FA0909001283114

 

PARTIES

Complainant is The Voice of Nosara S.A. (“Complainant”), represented by Robert L. Powley, of Powley & Gibson P.C., New York, USA.  Respondent is Dianne Weinert (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <voiceofnosara.com>, registered with 1 & 1 Internet Ag.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 9, 2009.

 

On September 10, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <voiceofnosara.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name.  1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 September 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 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@voiceofnosara.com by e-mail.

 

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

 

On October 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <voiceofnosara.com> domain name is identical to Complainant’s VOICE OF NOSARA mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, The Voice of Nosara S.A., is the owner of the VOICE OF NOSARA mark, registered with the Costa Rican trademark authorities, namely, El Ministerio de Justicia y Gracia (Reg. No. 161,570 filed March 10, 2006, issued August 18, 2006).  Complainant uses its VOICE OF NOSARA mark in connection with a newspaper in Costa Rica entitled “The Voice of Nosara” which has been in circulation since 2002. 

 

On January 12, 2004, a volunteer employee named Dianne Weinert (“Respondent”) registered the <voiceofnosara.com> domain name for Complainant to post an electronic version of the newspaper, although the employee registered the domain name in her name personally, not under the name of her employer.  On March 20, 2006, Complainant was acquired by another entity.  The sale specifically included all intellectual property associated with the Complainant.  Subsequently, Complainant attempted to contact Respondent to transfer the disputed domain name to the newspaper’s new owner.  However, Respondent refused to transfer the disputed domain name. 

 

The <voiceofnosara.com> domain name resolves to a website featuring click-through links and sponsored advertisements for other competing news sources in Costa Rica.  Additionally, Respondent has listed the disputed domain name for sale on the <sedo.com> domain name and resolving website, and Respondent is selling the disputed domain name for €10,000, which is roughly equivalent to $14,112 in the United States. 

 

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’s registration of the VOICE OF NOSARA mark with the Costa Rican trademark authorities, namely, El Ministerio de Justicia y Gracia (Reg. No. 161,570 filed March 10, 2006, issued August 18, 2006), sufficiently establishes Complainant’s rights in the VOICE OF NOSARA mark under Policy ¶ 4(a)(i).  Furthermore, it is not necessary for Complainant to have registered its mark in the country of Respondent’s residence.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Choice Hotels Int’l, Inc. v. Domain Admin., FA 791619 (Nat. Arb. Forum Oct. 18, 2006) (finding that the complainant had established rights in the CLARION HOTEL mark through registration of the mark with the Spanish trademark authority).

 

Prior to the registration of the <voiceofnosara.com> domain name, Complainant did not possess a trademark registration for its VOICE OF NOSARA mark.  Previous panels have concluded that a federal registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

Complainant has been using the VOICE OF NOSARA mark in connection with its newspaper since 2002.  The newspaper has a circulation in Costa Rica of approximately 1,300 during tourist season, and 800 during other times of the year.  Complainant’s newspaper is also sold in various grocery stores and convenience stores around Costa Rica and Complainant contends that the newspaper is well-known amongst the surrounding community.  Complainant submits evidence of its earnings for 2008 which totaled over $30,000 from advertising revenue. The Panel finds that Complainant has established sufficient secondary meaning in the VOICE OF NOSARA mark through continuous and extensive commercial use dating back to 2002.  Therefore, the Panel finds that Complainant has established common law rights in its VOICE OF NOSARA mark under Policy ¶ 4(a)(i).  See Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).   

 

Complainant alleges that the disputed domain name is identical to its VOICE OF NOSARA mark.  Respondent’s <voiceofnosara.com> domain name incorporates Complainant’s mark in its entirety with the mere omission of the spaces between the terms of the mark and the affixation of the generic top-level domain “.com.”  The Panel finds that this fails to alleviate the similarity between Complainant’s VOICE OF NOSARA mark and Respondent’s <voiceofnosara.com> domain name.  Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See 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)); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).   

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <voiceofnosara.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <voiceofnosara.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant alleges that Respondent is not commonly known by the disputed domain name.  The WHOIS information lists Respondent as “Dianne Weinert” and there is no other information in the record to suggest that Respondent is otherwise commonly known by the disputed domain name.  Thus, the Panel finds Respondent is not commonly known by the <voiceofnosara.com> 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 America W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The disputed domain name resolves to a website featuring click-through links that further resolve to the websites of Complainant’s competitors that also provide information and news to Costa Ricans.  The Panel presumes that Respondent is profiting from such use through the generation of click-through fees.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).

 

Complainant contends that Respondent has listed the disputed domain name for sale on the <sedo.com> domain name for €10,000, an amount in excess of Respondent’s out-of-pocket registration costs.  The Panel concludes that Respondent’s disproportionate offer to sell the <voiceofnosara.com> domain name for €10,000, which is roughly equivalent to $14,112 in the United States, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

 

Complainant further asserts that because Respondent was a former volunteer for Complainant, Respondent knew that Complainant had rights in the VOICE OF NOSARA mark.  Additionally, Respondent initially registered the <voiceofnosara.com> domain name for Complainant and its newspaper services.  Thus, Complainant contends that Respondent’s retention of the disputed domain name after Respondent ceased working for Complainant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Vinidex Pty Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the respondent lacked rights and legitimate interests in the domain name because it did not resolve to a developed website and the respondent, a former employee of the complainant, had constructive knowledge of the complainant’s rights in the mark); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s willingness to sell the disputed domain name for €10,000, an amount in excess of Respondent’s out-of-pocket registration costs, is evidence to suggest that Respondent has registered and is using the <voiceofnosara.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).  The Panel thus finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(i).  See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Randstad Gen. Partner, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).

Respondent’s <voiceofnosara.com> domain name resolves to a commercial website displaying hyperlinks to third-party websites, some of which redirect Internet users to the websites of Complainant’s competitors in the Costa Rican news industry.  The Panel finds that this use of the disputed domain name by Respondent disrupts Complainant’s business.  The Panel further finds that such a disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). 

The Panel further finds that Respondent’s use of the aforementioned hyperlinks on the website resolving from the identical disputed domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.  The Panel notes that Respondent’s presumed receipt of click-through fees allows Respondent to commercially gain from this likelihood of confusion.  Therefore, the Panel finds that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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). 

Complainant alleges that Respondent’s registration of the disputed domain name in her personal name, without authorization from Complainant, and retaining control over the disputed domain name after her volunteer term with Complainant ended is per se indicative of bad faith.  The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii) based on Respondent’s retention of the disputed domain name registration in her own name despite the fact that Respondent is no longer associated with Complainant.  See AA Portable Power Corp. v. Kevin Li, FA 931648 (Nat. Arb. Forum Apr. 23, 2007) (“Respondent registered the domain name in bad faith by registering the domain name in his own name rather than that of his employer”); see also Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later refused to transfer it to the complainant once their business relationship ended).

 

The Panel finds that 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 <voiceofnosara.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  October 23, 2009

 

 

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