Gedex Inc. v. Isaac Goldstein
Claim Number: FA1006001332191
Complainant is Gedex
Inc. (“Complainant”), represented by Timothy
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedex.com>, registered with Nameemperor.com LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On July 9, 2010, Nameemperor.com LLC confirmed by e-mail to the National Arbitration Forum that the <gedex.com> domain name is registered with Nameemperor.com LLC and that Respondent is the current registrant of the name. Nameemperor.com LLC has verified that Respondent is bound by the Nameemperor.com LLC 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 July 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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 firstname.lastname@example.org. Also on July 14, 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 August 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gedex.com> domain name is identical to Complainant’s GEDEX mark.
2. Respondent does not have any rights or legitimate interests in the <gedex.com> domain name.
3. Respondent registered and used the <gedex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gedex Inc., provides geological exploration, development, production, analysis, and interpretation services for natural resource industries. Complainant also provides gravity, geophysical, and geochemical measurements. Complainant owns a trademark registration for the GEDEX mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA597303 issued Dec. 11, 2003).
Respondent, Isaac Goldstein, registered the <gedex.com> domain name on June 23, 2010. The disputed domain name resolves to a website listing pay-per-click links that relate to Complainant’s geological services.
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 a trademark registration for the GEDEX mark with the CIPO (Reg. No. TMA597303 issued Dec. 11, 2003). The Panel finds that registering a mark with a national trademark authority is conclusive evidence of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Under Policy ¶ 4(a)(i), Respondent’s residence or business operations in a country outside where the mark is registered does not affect Complainant’s rights in the mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie against Respondent when alleging that Respondent does not possess rights and legitimate interests in the disputed domain name. In this instance, the Panel finds Complainant has presented its case adequately, thereby transferring the burden to demonstrate rights and legitimate interests to Respondent. Respondent has not satisfied this burden, however, because it has failed to respond to the Complaint. The Panel accordingly finds that Complainant’s allegations can be viewed as true and that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); 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 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 the interest of fairness, however, the Panel elects to consider all the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses any rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not commonly known by the <gedex.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Isaac Goldstein.” The Panel finds that the failure of the WHOIS information to nominally link Respondent with the disputed domain name indicates that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See 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 Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant argues that Respondent’s <gedex.com> domain name resolves to a website advertising pay-per-click links to third-party websites, many of which offer geological surveying, exploration, and consulting services similar to those offered by Complainant. The Panel finds that using the disputed domain name in conjunction with a directory website of pay-per-click links to competing websites is not a bona fide offering of goods or services according to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also contends that Respondent acquired the <gedex.com> domain name specifically for the purpose of selling the disputed domain name to Complainant, as evidenced by email correspondence offering to sell the <gedex.com> domain name to Complainant for 3,500 euros. The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of Respondent’s lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent acquired the <gedex.com> domain name with the primary objective to sell the disputed domain name to Complainant. Complainant asserts that Respondent sent several emails to Complainant offering to sell the disputed domain name for 3,500 euros, a price well in excess of reasonable out-of-pocket costs. The Panel finds that Respondent’s offers to sell the disputed domain name reveal bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Complainant alleges that Respondent’s website resolving from the <gedex.com> domain name is populated with pay-per-click links leading to third-party websites related to the geological exploration industry in competition with Complainant. The Panel finds that the presence of such links on a website that resolves from a disputed domain name which appropriates Complainant’s trademark disrupts Complainant’s business and demonstrates bad faith registration and use according to 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 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 asserts that the links displayed on Respondent’s <gedex.com> domain name are pay-per-click links which generate revenue for Respondent when clicked. Complainant argues that Respondent’s use of Complainant’s identical mark in the disputed domain name is intended to attract and confuse Internet users, and then subsequently redirect them to Respondent’s website of links for Respondent’s commercial gain. The Panel finds Respondent’s misleading activities and improper use of Complainant’s mark to profit indicates bad faith registration and use for the purposes of Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is 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 <gedex.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 11, 2010
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