The Robert Allen Group, Inc. v. Kun Da
Claim Number: FA1004001318889
Complainant is The Robert Allen Group, Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <robertallencontract.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2010.
On May 8, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <robertallencontract.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 May 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@robertallencontract.com by e-mail. Also on May 12, 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 June 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <robertallencontract.com> domain name is confusingly similar to Complainant’s ROBERT ALLEN mark.
2. Respondent does not have any rights or legitimate interests in the <robertallencontract.com> domain name.
3. Respondent registered and used the <robertallencontract.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Robert Allen Group, Inc., is an international designer and seller of fabrics, textiles and upholstery for home furnishings and bedding. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ROBERT ALLEN mark (e.g., Reg. No. 2,282,921 issued October 5, 1999).
Respondent, Kun Da, registered the <robertallencontract.com> domain name on April 3, 2009. Respondent’s disputed domain name resolves to the third-party <sedo.com> website that displays various third-party links to businesses and websites that are in competition with Complainant.
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.
The Panel finds that Complainant has established rights in
its ROBERT ALLEN mark pursuant to Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (e.g.,
Reg. No. 2,282,921 issued October 5, 1999).
Further, the Panel finds that Complainant’s trademark registration need
not be in the country of residence of Respondent in order to have enforceable
rights under 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Complainant argues that
Respondent’s <robertallencontract.com> domain name is
confusingly similar to its ROBERT ALLEN mark.
Complainant contends that removing the space between the terms of its
mark and adding the generic term “contract” is not sufficient to distinguish
the disputed domain name from its mark.
Furthermore, Complainant argues that the addition of the generic
top-level domain (“gTLD”) “.com” is not relevant to a Policy ¶ 4(a)(i) analysis because it is a required element of all domain
names. The Panel finds that Respondent’s
<robertallencontract.com>
domain name is confusingly similar to Complainant’s ROBERT ALLEN mark under
Policy ¶ 4(a)(i), where it contains Complainant’s mark entirely, absent the
space between the terms of the mark, adds the generic term “contract” and the
gTLD “.com.” See Am. Int’l Group, Inc. v. Domain
Admin. Ltd., FA 1106369 (Nat.
Arb. Forum Dec. 31, 2007) (finding that “spaces are
impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶
4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <robertallencontract.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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 produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <robertallencontract.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known
by the <robertallencontract.com>
domain name and that
Complainant has not granted Respondent permission to use Complainant’s mark in
a domain name. The WHOIS information for
the <robertallencontract.com> domain name identitfies “Kun Da” as the registrant of
the disputed domain name. The Panel
finds there is no evidence on record indicating that Respondent is commonly
known by the disputed domain name, and Respondent offers no evidence to negate
Complainant’s contentions. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
name under Policy ¶ 4(c)(ii) and therefore lacks rights and legitimate
interests in the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name);
see also 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).
Complainant argues that Respondent has used the disputed domain name to resolove to the third-party <sedo.com> website, that displays advertisements and hyperlinks to businesses and websites in competition with Complainant. Complainant contends that this type of use is not connected with a bona fide offering of goods or services or a legitimate noncommercial or fair use, and that Respondent therefore lacks rights and legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name to display, or allow to be displayed, advertisements and third-party links to businesses in competition with Complainant is not a use in connection with 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 Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant further contends
that Respondent is currently attempting to auction the <robertallencontract.com>
domain name to the highest bidder, and that such willingness to sell the
disputed domain name is further evidence that Respondent lacks rights and
legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) where it is attempting to auction the
disputed domain name to the highest bidder.
See 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.”); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s
conduct purporting to sell the domain name suggests it has no legitimate
use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is currently attempting to auction the disputed domain to the highest bidder. Complainant contends that such conduct by Respondent demonstrates Respondent’s registration and use of the disputed domain name in bad faith. The Panel finds that Respondent’s actions in attempting to auction the disputed domain name demonstrate Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). 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 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).
Complainant alleges that Respondent has created a disruption
in Complainant’s linen and fabric business by using the confusingly similar <robertallencontract.com> domain name
to display third-party links to Complainant’s competitors. Complainant argues that such use is evidence
of Respondent’s bad faith registration and use.
The Panel finds that Respondent’s use of the disputed domain name to
divert Internet users seeking Complainant’s goods, services and website to the
businesses of Complainant’s competitors is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii). See 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 Policy ¶ 4(b)(iii)); see
also St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users
seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”).
Complainant further contends
that Respondent was using the disputed domain name to collect click-through
fees from the businesses that were advertised on the website resolving from the
disputed domain name. Complainant alleges
that Respondent’s disputed domain name resolved to the third-party
<sedo.com> website, which is a monetizing website that pays domain name
registrants for each Internet user that clicks on the links or advertisments
displayed through the domain name.
Complainant argues that such use is evidence of Respondent’s bad faith
registration and use of the <robertallencontract.com>
domain name. The Panel agrees and finds
that Respondent registered and used the <robertallencontract.com>
domain name in bad faith under Policy ¶ 4(b)(iv) where Respondent was
benefiting commercially from advertising revenues raised through the trademark
infringing domain name. See 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 Policy ¶ 4(b)(iv));
see also The Ass’n of Junior
Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <robertallencontract.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 9, 2010
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