national arbitration forum

 

DECISION

 

Tana Industries Company Ltd. v. Yazam Inc c/o Twiss, Ronen

Claim Number: FA0910001289781

 

PARTIES

Complainant is Tana Industries Company Ltd. (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C., Virginia, USA.  Respondent is Yazam Inc c/o Twiss, Ronen (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com>, registered with Tucows Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2009.

 

On October 19, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names.  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 October 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@tanawaterusa.com, postmaster@tami4.com, postmaster@tami4usa.com, and postmaster@tanahop.com by e-mail.

 

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

 

On November 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <tanawaterusa.com> and <tanahop.com> domain names are confusingly similar to Complainant’s TANA mark.  Respondent’s <tami4.com> and <tami4usa.com> domain names are confusingly similar to Complainant’s TAMI mark.

 

2.      Respondent does not have any rights or legitimate interests in the <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com> domain names.

 

3.      Respondent registered and used the <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Tana Industries Company Ltd., has been in business for over thirty years and is one of the most advanced developers and manufacturers of home and office water purifying systems.  Complainant is owner of the TANA and TAMI marks, registered with the United States Patent and Trademark Office (“USPTO”) on July 26, 2005 (Reg. No. 2,978,315) and May 30, 1989 (Reg. No. 1,541,418), respectively.     

 

Respondent, Yazam Inc c/o Twiss, Ronen, registered each of the four disputed domain names on June 3, 2008.  Each of the disputed domain names resolve to a website displaying sponsored click-through links.  Some of links appearing on the disputed domain names advertise third-party websites that are in direct competition with Complainant in the water purification industry and some of the links are advertisements for third-parties that are unrelated to Complainant.  For example, the sponsored links appearing at the website resolving from the <tanawaterusa.com> domain name include “Culligan Water” and “Pure Alkaline Water.”  The sponsored links appearing on the website resolving from the <tanahop.com> domain name include “Hip Hop Classes” and “Home Brewing.”

 

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 rights in the TANA and TAMI  marks through registration with the USPTO.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

Respondent’s <tanawaterusa.com> and <tanahop.com> domain names are confusingly similar to its TANA mark under Policy ¶ 4(a)(i).  The disputed domain names incorporate Complainant’s TANA mark in its entirety, a generic word - “water” and “hop,” respectively - and the generic top-level domain (“gTLD”) “.com.”  The <tanawaterusa.com> domain name also includes the geographic identifier “usa.”  The Panel finds that these additions are insufficient to overcome the confusing similarity that results from using Complainant’s entire mark.  Therefore, the <tanawaterusa.com> and <tanahop.com> domain names are confusingly similar to Complainant’s TANA mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark).

 

Respondent’s <tami4.com> and <tami4usa.com> domain names both incorporate Complainant’s TAMI mark in its entirety, the number 4, and the generic top-level domain (“gTLD”) “.com.”  The <tami4usa.com> domain name also adds the geographic identifier “usa.”  The Panel finds that the <tami4.com> and <tami4usa.com> domain names are confusingly similar to Complainant’s TAMI mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd., supra; also JVC Americas Corp., supra; see also Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)).

 

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

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, and then the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will examine the record in consideration of the factors listed in Policy ¶ 4(c).  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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use its marks, and the WHOIS information identifies the registrant as “Yazam Inc c/o Twiss, Ronen.”  The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Thus, the Panel finds that Respondent is not commonly known by the <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com> domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. 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.”).

 

Complainant contends that the websites resolving from the disputed domain names displays links to third-party websites.  Some of the these links direct Internet users to Complainant’s direct competitors and some are unrelated to Complainant.  The Panel infers that Respondent receives click-through-fees for these links.  The Panel finds this 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does 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)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com> domain names, registered on June 3, 2008, to redirect Internet users to Respondent’s websites that feature links to third-party sites, some of which compete with Complainant’s business.  The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites.  Because Respondent’s domain names are confusingly similar to Complainant’s TANA and TAMI marks, Internet users accessing Respondent’s disputed domain names may become confused as to Complainant’s affiliation with the resulting website.  Thus, Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

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 <tanawaterusa.com>, <tami4.com>, <tami4usa.com>, and <tanahop.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  November 25, 2009

 

 

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