Ascentive, LLC v. Lixin Ma
Claim Number: FA1006001329741
Complainant is Ascentive,
LLC (“Complainant”), represented by Alexis
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <finallyfast-pc.com>, registered with Hooyoo Information Technology Co., Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2010. The Complaint was submitted in both Chinese and English.
On June 20, 2010, Hooyoo Information Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <finallyfast-pc.com> domain name is registered with Hooyoo Information Technology Co., Ltd and that Respondent is the current registrant of the name. Hooyoo Information Technology Co., Ltd has verified that Respondent is bound by the Hooyoo Information Technology Co., Ltd 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 June 28, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 19, 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@finallyfast-pc.com. Also on June 28, 2010, the Chinese language 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 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 (the "Rules") "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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <finallyfast-pc.com> domain name is confusingly similar to Complainant’s FINALLYFAST.COM mark.
2. Respondent does not have any rights or legitimate interests in the <finallyfast-pc.com> domain name.
3. Respondent registered and used the <finallyfast-pc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ascentive, LLC, develops and sells computer software products focused on improving computer system performance, increasing speed, protecting privacy, and eliminating spyware. Complainant owns multiple trademark registrations for its FINALLYFAST.COM and related marks with the United States Patent and Trademark Office (“USPTO”):
FINALLYFAST.COM Reg. No. 3,533,775 issued Nov. 18, 2008;
FINALLY FAST Reg. No. 3,727,610 issued Dec. 22, 2009; and
FINALLYFAST Reg. No. 3,727,611 issued Dec. 22, 2009.
Respondent, Lixin Ma, registered the <finallyfast-pc.com> domain name on July 31, 2009. The disputed domain name resolves to a website advertising the similar software products of one of Complainant’s competitors, RegCure.com, through pay-per-click links.
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.
Complainant owns multiple trademark registrations for its FINALLYFAST.COM and related marks with the USPTO:
FINALLYFAST.COM Reg. No. 3,533,775 issued Nov. 18, 2008;
FINALLY FAST Reg. No. 3,727,610 issued Dec. 22, 2009; and
FINALLYFAST Reg. No. 3,727,611 issued Dec. 22, 2009.
The Panel finds that once a trademark is registered with the
USPTO, that registration serves as conclusive proof of Complainant’s rights in
the mark for the purposes of Policy ¶ 4(a)(i), even
when the mark is registered in a country outside that of Respondent’s residence
of business. See Reebok
Int’l Ltd. v.
Complainant contends that Respondent’s <finallyfast-pc.com> domain name is confusingly similar to Complainant’s FINALLYFAST.COM mark. Complainant argues that the only modifications to Complainant’s mark are the additions of a hyphen and the descriptive term “pc.” The Panel finds that neither of those additions is sufficient to transform the disputed domain name into something distinct from Complainant’s mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark). Therefore, Respondent’s <finallyfast-pc.com> domain name is confusingly similar to Complainant’s FINALLYFAST.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name and its supporting evidence presented are sufficient to establish the prima facie case against Respondent required by Policy ¶ 4(a)(ii). Respondent’s failure to respond to Complainant’s Complaint indicates that Respondent has not met its burden in proving its rights and legitimate interests in the disputed domain name. As a result, the Panel finds that Complainant’s allegations are to be viewed as true and that the Panel can accordingly assume that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190(Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or legitimate interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). In an effort to fully examine the situation, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to make an independent determination of whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <finallyfast-pc.com> domain name or Complainant’s FINALLYFAST.COM mark. The WHOIS information for the <finallyfast-pc.com> domain name lists the registrant as “ma lixin.” The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and thus has no rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See M. Shanken COmmc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant alleges that Respondent is not using the <finallyfast-pc.com> domain name to offer goods or services but is instead using the disputed domain name to advertise for one of Complainant’s key competitors, RegCure.com, through the presence of pay-per-click links. Complainant asserts that when Internet users click on any of the links displayed on Respondent’s resolving website, the Internet users are prompted to download RegCure.com software. The Panel finds that using the disputed domain name which appropriates Complainant’s mark to advertise a competitor and personally benefit through pay-per-click links is not a bona fide offering of goods or services in keeping with Policy ¶ 4(c)(i) or a legitimate noncommercial of fair use in accord with Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that the content and pay-per-click links featured at the <finallyfast-pc.com> domain name relate to one of Complainant’s main competitors, RegCure.com. Complainant asserts that since clicking on any of the links displayed prompts users to download competing software, Respondent’s disputed domain name disrupts Complainant’s business by fostering competition. The Panel finds that such registration and use of the disputed domain name indicates bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); 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 alleges that Respondent appropriates
Complainant’s FINALLYFAST.COM in the <finallyfast-pc.com>
domain name in order to attract Internet users seeking Complainant and
Complainant’s products. Complainant
argues that Respondent intends to create confusion by featuring similar computer
software products in the form of pay-per-click links on the disputed domain
name’s resolving website. Once any of
the displayed links are clicked, Internet users are prompted to download the
products of Complainant’s competitor, RegCure.com, and Respondent presumably profits
from click-through fees. The Panel finds
that Respondent’s intentions to financially benefit from its misuse of
Complainant’s mark and efforts to create confusion demonstrate bad faith
registration and use under Policy ¶ 4(b)(iv). 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 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <finallyfast-pc.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 30, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum