national arbitration forum

 

DECISION

 

Al-Marah Arabians v. Maripon Management, Inc.

Claim Number: FA1002001309750

 

PARTIES

Complainant is Al-Marah Arabians (“Complainant”), represented by Sam Trejo, of Xcentech Computers LLC, Arizona, USA.  Respondent is Maripon Management Inc. (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <al-marah.com>, registered with GoDaddy.com, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.

 

On February 24, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <al-marah.com> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@al-marah.com.  Also on March 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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 <al-marah.com> domain name is confusingly similar to Complainant’s AL-MARAH ARABIANS mark.

 

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

 

3.      Respondent registered and used the <al-marah.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Al-Marah Arabians, is an Arizona, USA based breeder of Arabian horses.  Complainant owns a trademark registration with United States Patent and Trademark Office (“USPTO”) for is AL-MARAH ARABIANS mark (Reg. No. 2,368,125 issued on July 18, 2000).  Complainant also submits evidence that it registered the <al-marah.com> domain name in 1997 and that its registration inadvertently lapsed around November 9, 2009.  Shortly thereafter Respondent purchased the disputed domain name at auction.

 

Respondent took over registration of the <al-marah.com> domain name on or around November 20, 2009.  Respondent’s disputed domain name currently resolves to a website that displays Complainant’s AL-MARAH ARABIANS mark included in an advertisement that the domain name is for sale and that Internet users should e-mail Respondent an offer for the domain name.  Upon receiving correspondence from Complainant, Respondent offered to sell the disputed domain name for $5,600.

 

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

 

Complainant owns a trademark registration with the USPTO for its AL-MARAH ARABIANS mark (Reg. No. 2,368,125 issued on July 18, 2000).  The Panel finds that Complainant possesses rights in the AL-MARAH ARABIANS mark for purposes of Policy ¶ 4(a)(i).  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 Policy ¶ 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.”); see also 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). 

 

Complainant argues that Respondent’s <al-marah.com> domain name is confusingly similar to its AL-MARAH ARABIANS mark.  Complainant contends that the disputed domain name contains the portion of its mark that can be trademarked and simply adds the generic top level domain (“gTLD”) “.com.”  The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because it merely deletes the descriptive word “Arabians” from the mark and adds the gTLD “.com.”  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once the Complainant has produced a prima facie case the burden shifts to Respondent to show it does have a right or legitimate interest in the disputed domain name.  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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that Complainant has established a prima facie case.  Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent permission to use its mark.  The WHOIS information displays, “Admin, Domain Support@internet-guide.biz; Maripon Management, Inc.” as the registrant of the <al-marah.com> domain name and Respondent does not offer evidence of it being commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant further argues that Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services.  Complainant submits evidence that Respondent’s current use of the website is to display Respondents e-mail address and solicit offers for the sale of the domain name as if Respondent was Complainant.  The Panel finds that Respondent’s use of the confusingly similar domain name to pass itself off as Complainant in order to sell the disputed domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).

 

Complainant presents further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant contends that it has owned the <al-marah.com> domain name since 1997 and that it inadvertently let the registration lapse, upon which Respondent purchased it.  Complainant further contends that Respondent, upon receiving correspondence from Complainant responded that it would be willing to sell the disputed domain name back to Complainant for $5,600.  The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse); 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); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s purpose of purchasing the disputed domain name was to sell it.  To support this Complainant submits a screen shot of the current website that resolves from the disputed domain name as well as an e-mail from Respondent to Complainant stating that it would sell the disputed domain name to Complainant for $5,600.  The Panel finds that Respondent’s use is evidence of bad faith registration and use under Policy ¶ 4(b)(i) because Respondent registered the disputed domain shortly after Complainant’s registration had lapsed, and quickly offered the disputed domain name for sale to Complainant.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).

 

Complainant also argues that since it held the <al-marah.com> domain name from 1997 until November 2009 that Respondent’s registration of the disputed domain name was made in bad faith.  The Panel finds that Respondent’s registration of the disputed domain name shortly after Complainant’s lapse of registration, along with its offer to sell the domain name openly and directly to Complainant is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.    

 

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 <al-marah.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, N.Y. (Ret.)

 

Dated:  April 14, 2010

 

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