Tana Industries Company Ltd. v. Yazam Inc c/o
Twiss, Ronen
Claim Number: FA0910001289783
PARTIES
Complainant is Tana Industries
Company Ltd., Israel (“Complainant”) represented by David R. Haarz, of Harness,
Dickey & Pierce, P.L.C.
Respondent is Yazam Inc c/o Twiss, Ronen, New Jersey, USA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tanawater.us>,
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
(the “Forum”) electronically on October 15, 2009; the Forum received a hard
copy of the Complaint on October 19, 2009.
On October 16, 2009, Tucows Inc. confirmed by e-mail to the Forum that
the <tanawater.us> 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 the U. S. Department of Commerce’s usTLD
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 in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On November 13, 3009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Sandra J.
Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the 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
1. Respondent’s <tanawater.us> domain name is confusingly similar to Complainant’s TANA mark.
2.
Respondent does not have any rights or
legitimate interests in the <tanawater.us> domain name.
3.
Respondent registered and used the <tanawater.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Tana Industries Company Ltd.,
develops and manufactures drinking water systems. Complainant has been in business for over
thirty years, and has become an international company with distributors across
Europe, Scandinavia, Mexico, and the United States. Complainant holds a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for its TANA mark
(Reg. No. 2,978,315 issued July 26, 2005).
Respondent, Yazam Inc. c/o Ronen Twiss,
registered the <tanawater.us> domain name on June 3,
2008. The disputed domain name resolves
to a website featuring a commercial search engine and hyperlinks which resolve
to Complainant and Complainant’s competitors.
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds
Complainant has established rights in the TANA mark under Policy ¶ 4(a)(i)
through its registration with the USPTO.
See 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 [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v.
Burkes, FA 652743 (Nat. Arb. Forum Apr. 17,
2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”).
Respondent’s <tanawater.us> domain name is confusingly similar to Complainant’s TANA mark. The disputed domain name contains Complainant’s entire TANA mark. Respondent simply adds the descriptive term “water,” which describes Complainant’s drinking water systems, and adds the country-code top-level domain (“ccTLD”) “.com.” The Panel finds the addition of a descriptive term and the addition of a ccTLD fail to adequately distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). The Panel finds Respondent’s <tanawater.us> domain name is confusingly similar to Complainant’s TANA mark under Policy ¶ 4(a)(i).
The Panel finds
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
<tanawater.us> 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
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 disputed 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 Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the absence
of a Response, the Panel accepts as true all reasonable allegations . . .
unless clearly contradicted by the evidence.”); see also 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 [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <tanawater.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent has never been authorized to use the TANA mark. Complainant further provides the WHOIS information, which lists Respondent as “Yazam Inc. c/o Twiss, Ronen.” Respondent failed to provide evidence that it is commonly known by the <tanawater.us> domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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 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 UDRP ¶ 4(c)(ii) does not apply).
Respondent uses the <tanawater.us> domain name to resolve to a parked website that features a commercial search engine and hyperlinks relating to Complainant and Complainant’s competitors in the drinking water systems industry. Respondent likely profits from this use by receiving click-through fees from the commercial search engine and hyperlinks. Therefore, the Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Registration
and/or Use in Bad Faith
Respondent offered to sell the <tanawater.us>
domain name to Complainant. Complainant
offered to pay Respondent’s costs of acquiring the disputed domain name, but
Respondent did not respond to Complainant’s offer. The Panel finds Respondent’s attempt to sell
the confusingly similar disputed domain name for an amount greater than
Respondent’s out-of-pocket costs constitutes bad faith use under Policy ¶
4(b)(i). See Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain
names for sale); see also World Wrestling Fed’n Entm’t., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs).
Respondent’s <tanawater.us> domain name resolves to a website that contains a commercial search engine and hyperlinks relating to Complainant and Complainant’s competitors in the drinking water systems business. Internet users searching for Complainant and Complainant’s drinking water systems may instead purchase a competitor’s drinking water system because of Respondent’s use of the confusingly similar disputed domain name. The Panel finds Respondent’s use disrupts Complainant’s water system business, which constitutes bad faith use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)).
The Panel presumes Respondent receives click-through fees from the hyperlinks to Complainant and Complainant’s competitors in the drinking water systems industry. Respondent is using the confusingly similar disputed domain name to profit from Internet users’ confusion as to Complainant’s affiliation with the disputed domain name and resolving website. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tanawater.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 25, 2009
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