Innovasjon Norge, d/b/a Innovation
Claim Number: FA0911001295788
Complainant is Innovasjon Norge,
d/b/a Innovation Norway,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visitnorway.us>, registered with Godaddy.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 23, 2009; the Forum received a hard copy of the Complaint on November 24, 2009.
On November 24, 2009, Godaddy.Com, Inc. confirmed by e-mail to the Forum that the <visitnorway.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 November 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 21, 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 December 28, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <visitnorway.us> domain name is identical to Complainant’s VISITNORWAY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <visitnorway.us> domain name.
3. Respondent registered and used the <visitnorway.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Innovasjon Norge d/b/a
Innovation Norway, promotes the Norwegian tourism industry by providing Norwegian
travel guide and travel information services.
Complainant has offices in thirty countries, including the
Respondent, VisitWorld, registered the <visitnorway.us>
domain name on October 9, 2009. The
disputed domain name resolves to a website featuring hyperlinks and
advertisements relating to Complainant’s competitors in the
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
Complainant has filed for a trademark registration with the United States Patent and Trademark Office (“USPTO”), but Complainant does not yet hold a trademark registration for its VISITNORWAY mark. However, governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous UDRP panels have determined that a federal registration is not required under UDRP ¶ 4(a)(i) so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that UDRP ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant uses the VISITNORWAY
mark to conduct its travel guide and information business since 1999. Complainant distributes electronic newsletters, promotional videos, and electronic
communications on social networking sites relating to its travel guide
services. Complainant operates a
website at its <visitnorway.com>
domain name, which features travel guide services and information relating to
Complainant claims Respondent’s <visitnorway.us> domain name is identical to Complainant’s VISITNORWAY.COM mark. The disputed domain name contains Complainant’s entire mark and simply substitutes the country code top-level domain (“ccTLD”) “.us” for the generic top-level domain (“gTLD”) “.com.” The Panel finds a disputed domain name remains identical to a complainant’s mark even after the substitution of a ccTLD for a gTLD. See 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); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel concludes Respondent’s <visitnorway.us> domain name is identical to Complainant’s VISITNORWAY.COM 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 <visitnorway.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 <visitnorway.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 VISITNORWAY.COM mark. Complainant further provides the WHOIS information which lists Respondent as “VisitWorld.” Respondent failed to provide evidence that is commonly known by the <visitnorway.us> domain name. Furthermore, the Panel fails to find evidence in the record suggesting that Respondent is commonly known by the disputed 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
<visitnorway.us> domain name to resolve to a website that features
hyperlinks relating to Complainant and Complainant’s competitors in the
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
domain name resolves to a website that contains hyperlinks relating to
Complainant and Complainant’s competitors in the travel guide services
business. Internet users searching for
Complainant and Complainant’s travel guide services may instead use Complainant’s
competitor’s travel guide service because of Respondent’s use of the
confusingly similar disputed domain name.
The Panel finds Respondent’s use disrupts Complainant’s travel guide
business, which constitutes bad faith registration and use under Policy ¶
4(b)(iii). See Am. Airlines, Inc. v.
The Panel presumes
Respondent receives click-through fees from the hyperlinks to Complainant and
Complainant’s competitors in the travel guide services 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 registration and use
under Policy ¶ 4(b)(iv). See
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <visitnorway.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 11, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page