national arbitration forum

 

DECISION

 

Nourison Industries, Inc. v. Mike Iser

Claim Number: FA1005001325532

 

PARTIES

Complainant is Nourison Industries, Inc. (“Complainant”), represented by Yuval H. Marcus of Leason Ellis LLP, New York, USA.  Respondent is Mike Iser (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nourisonrugs.org>, registered with eNom, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically May 19, 2010.

 

On May 28, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nourisonrugs.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@nourisonrugs.org.  Also on June 9, 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 July 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <nourisonrugs.org>, is confusingly similar to Complainant’s NOURISON mark.

 

2.      Respondent has no rights to or legitimate interests in the <nourisonrugs.org> domain name.

 

3.      Respondent registered and used the <nourisonrugs.org> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Nourison Industries, Inc., uses its NOURISON mark in connection with floor coverings and handmade area rugs.  Complainant operates its business from the website resolving from its registered domain name <nourison.com>.  Complainant has registered the NOURISON with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,721,238 filed February 10, 2009; issued December 8, 2009). 

 

Respondent, Mike Iser, registered the disputed domain August 17, 2009.  The disputed domain name resolves to a website that purports to offer sales advice and commentary on Complainant’s products and also features third-party click-through links to websites that compete with Complainant. 

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant asserts rights in its NOURISON mark based on its trademark registration with the USPTO (Reg. No. 3,721,238 filed February 10, 2209; issued December 8, 2009).  The Panel finds that Complainant’s registration of its NOURISON mark establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  The Panel further finds that the relevant date of Complainant’s rights in its NOURISON mark is the date that the registration was filed with the USPTO.  Therefore, the Panel finds that Complainant’s rights in the mark date back to February 10, 2009, effectively predating Respondent’s registration of the disputed domain name August 17, 2009.  Additionally, the Panel finds that Complainant’s registration with a federal trademark authority is adequate evidence of its rights in the mark even if Respondent does not operate or reside in that jurisdiction.  See 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); 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 asserts that Respondent’s <nourisonrugs.org> domain name is confusingly similar to Complainant’s NOURISON mark.  Respondent’s disputed domain name merely adds the descriptive term “rugs” and the generic top-level domain (“gTLD”) “.org” to the entirety of Complainant’s mark.  The Panel finds that the addition of a descriptive term does not distinguish Respondent’s disputed domain name from Complainant’s mark but creates a name that is confusingly similar to Complainant’s mark under a Policy ¶ 4(a)(i) analysis.  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 Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).  The Panel also finds that the addition of a gTLD does not sufficiently distinguish a disputed domain name from a mark as a gTLD is a required element of a domain name.  See 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); see also 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.”).  Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <nourisonrugs.org> domain name is confusingly similar to Complainant’s NOURISON mark.

 

The Panel finds that the disputed domain name is confusingly similar to Complainant‘s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant must first make a prima facie case to support its allegations under the requirements of Policy ¶ 4(a)(ii).  After that, the burden shifts to Respondent to prove that it does have such rights or legitimate interests.  The Panel finds that Complainant established a prima facie case to support its allegations based on the arguments set forth in the Complaint.  Additionally, the Panel finds that Respondent’s failure to respond to these proceedings allows the Panel to presume that Respondent lacks all rights and legitimate interests.  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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

This Panel; however, reviews the evidence in the record before making a determination as to whether or not the evidence suggests that Respondent could have such rights and interests.  The WHOIS information lists the registrant of the disputed domain name as “Mike Iser,” which the Panel finds is not nominally related to the disputed domain name.  Based on the WHOIS information and the lack of evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant further urges that Respondent’s disputed domain name resolves to a website that purports to offer sales advice and commentary on Complainant’s products and that also features third-party click-through links to websites that compete with Complainant.  The Panel finds that displaying pay-per-click links to competitors of Complainant in the floor covering and area rug industry is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); 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).

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered the disputed domain name with the primary intent of disrupting Complainant’s business and therefore registered and used the disputed domain name in bad faith.  Respondent’s website resolving from the disputed domain name provides links to third-party competitors of Complainant in the floor covering and area rug market.  Internet users seeking Complainant and its products may be diverted to a competitor’s website, resulting in a loss of business to Complainant.  The Panel finds that Respondent’s registration and use of the disputed domain name for such a purpose is evidence of Respondent’s bad faith pursuant to 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant also alleges that Respondent uses the disputed domain name to intentionally attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s trademark.  Complainant asserts that Respondent has attempted to create an affiliation with Complainant by featuring multiple references to Complainant and its products on the resolving website.  The Panel presumes that Respondent receives click-through fees and thus profits from the Internet users’ confusion.  The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <nourisonrugs.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: July 13, 2010.

 

 

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