Globe
Union (
Claim Number: FA1007001333949
Complainant is Globe
Union (Bermuda) Trading Ltd. (“Complainant”), represented by Glenn A. Rice, of Funkhouser Vegosen
Liebman & Dunn Ltd.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gerberplumbingfixtures.com>, registered with Directi Internet Solutions Pvt. 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.
On July 8, 2010, Directi Internet Solutions Pvt. Ltd confirmed by e-mail to the National Arbitration Forum that the <gerberplumbingfixtures.com> domain name is registered with Directi Internet Solutions Pvt. Ltd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd has verified that Respondent is bound by the Directi Internet Solutions Pvt. 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 July 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@gerberplumbingfixtures.com by e-mail. Also on July 13, 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 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <gerberplumbingfixtures.com> domain name is confusingly similar to Complainant’s GERBER mark.
2. Respondent does not have any rights or legitimate interests in the <gerberplumbingfixtures.com> domain name.
3. Respondent registered and used the <gerberplumbingfixtures.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Globe Union (
Respondent, Rakshita Mercantile Private Limited, registered the <gerberplumbingfixtures.com> domain name on September 25, 2007. The disputed domain name resolves to a website featuring a list of hyperlinks to Complainant’s competitors in the plumbing fixtures business.
Respondent has been a respondent in previous UDRP cases where
domain names were transferred from Respondent to the respective
complainants. See Priceline.com, Inc. v. Rakshita Mercantile Private Limited, FA
1304759 (Nat. Arb. Forum Mar. 10, 2010); see
also Aeropostale, Inc. v. Rakshita Mercantile Private Limited, FA 1296970
(Nat. Arb. Forum Jan. 13, 2010); see also
Travelocity.com LP v. Rakshita Mercantile Private Ltd., FA 1305139 (Nat.
Arb. Forum Mar. 15, 2010); see also
Allianz SE v. Rakshite Mercantile Private Ltd., FA 1277743 (Nat. Arb. Forum
Sep. 22, 2009); see also LD Products,
Inc. v. Rakshita Mercantile Private Ltd., FA 1271503 (Nat. Arb. Forum Aug.
12, 2009).
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 alleges that it has established rights in its
GERBER mark under Policy ¶ 4(a)(i). Previous
panels have held that a complainant may establish rights in a mark by
registering the mark with a federal trademark authority even when the trademark
registration is in a country that the respondent does not reside in. 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 Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the
complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE
marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant argues that Respondent’s <gerberplumbingfixtures.com> domain name is confusingly similar to Complainant’s GERBER mark. Previous panels have found that the addition of descriptive terms and the gTLD are insufficient to adequately distinguish a disputed domain name from a complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); 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 disputed domain name combines Complainant’s GERBER mark with the descriptive terms “plumbing” and “fixtures,” which describe Complainant’s plumbing fixture products. The disputed domain name further contains the generic top-level domain (“gTLD”) “.com.” Consequently, the Panel finds Respondent’s <gerberplumbingfixtures.com> domain name is confusingly similar to Complainant’s GERBER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <gerberplumbingfixtures.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <gerberplumbingfixtures.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges that Respondent is not commonly known by
the <gerberplumbingfixtures.com> domain name under Policy ¶ 4(c)(ii).
Past panels have concluded that a respondent is not commonly known by
the disputed domain name when the respondent has failed to respond to the
complainant, the WHOIS information does not indicate that the respondent is
commonly known by the disputed domain name, and the complainant asserts that
the respondent is not authorized to use the complainant’s mark. 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 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). Respondent has failed to respond
to the Complaint and has failed to present any evidence that Respondent is
commonly known by the disputed domain name.
The WHOIS information identifies the domain name registrant as “Rakshita
Mercantile Private Limited,” which the Panel finds is not similar to the <gerberplumbingfixtures.com>
domain name. Complainant alleges
that Respondent is not authorized to use Complainant’s GERBER mark. Based on the evidence in the record, the
Panel finds Respondent is not commonly known by the <gerberplumbingfixtures.com>
domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims
that Respondent’s use of the <gerberplumbingfixtures.com> domain
name is not a bona fide offering of
goods or services or a legitimate noncommercial or fair use of the disputed domain
name. Prior panels have found that a
respondent’s use of a disputed domain name to resolve to a website containing
hyperlinks to a complainant’s competitors is 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 Wal-Mart
Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the
respondent’s use of domain names confusingly similar to the complainant’s
WAL-MART mark to divert Internet users seeking the complainant’s goods and
services to websites competing with the complainant did not constitute 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 St.
Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or
confusingly similar domain name to earn click-through fees via sponsored links
to a complainant’s competitors does not represent 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)).
Respondent uses the <gerberplumbingfixtures.com> domain
name to resolve to a website that features hyperlinks to Complainant’s
competitors in the plumbing fixtures business.
The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the <gerberplumbingfixtures.com> domain name is a part of a pattern of bad faith
registration and use. Previous panels
have determined that a respondent’s use of a disputed domain name is a part of
a pattern of bad faith registration and use when a respondent has been a
respondent in previous UDRP cases where domain names were transferred from a
respondent to other respective complainants.
See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad
faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the
complainant from reflecting its mark in a domain name and the respondent had
several adverse decisions against it in previous UDRP proceedings, which
established a pattern of cybersquatting); see also Arai
Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the
disputed domain name, <aria.com>, to prevent Complainant from registering
it” and taking notice of another UDRP proceeding against the respondent to find
that “this is part of a pattern of such registrations”). In this case, Respondent
has been a respondent in previous UDRP cases where domain names were
transferred from Respondent to the respective complainants. See
Priceline.com, Inc. v. Rakshita Mercantile Private Limited, FA 1304759
(Nat. Arb. Forum Mar. 10, 2010); see also
Aeropostale, Inc. v. Rakshita Mercantile Private Limited, FA 1296970 (Nat.
Arb. Forum Jan. 13, 2010); see also
Travelocity.com LP v. Rakshita Mercantile Private Ltd., FA 1305139 (Nat.
Arb. Forum Mar. 15, 2010); see also
Allianz SE v. Rakshite Mercantile Private Letd., FA 1277743 (Nat. Arb.
Forum Sep. 22, 2009); see also LD
Products, Inc. v. Rakshita Mercantile Private Ltd., FA 1271503 (Nat. Arb.
Forum Aug. 12, 2009). Consequently, the
Panel finds Respondent’s use of the <gerberplumbingfixtures.com> domain name constitutes bad faith
registration and use under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s use of the <gerberplumbingfixtures.com> domain name diverts Complainant’s customers
to Complainant’s competitors and constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). Past panels
have concluded that a respondent’s use of a disputed domain name to host
hyperlinks to a complainant’s customers constitutes bad faith registration and
use. 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).”). Respondent’s <gerberplumbingfixtures.com>
domain name resolves to a website that contains hyperlinks to Complainant’s
competitors in the plumbing fixtures industry.
Therefore, the Panel finds that Respondent’s use of the disputed domain
name diverts Complainant’s customers to a competitor, which constitutes bad
faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues
that Respondent commercially benefits from Internet users’ confusion, which is
evidence of Respondent’s bad faith registration and use. Prior panels have determined that a
respondent has registered and used a disputed domain name in bad faith when a
respondent uses a disputed domain name to host pay-per-click hyperlinks on a
website resolving from a confusingly similar disputed 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 Williams-Sonoma, Inc. v.
Fees, FA 937704 (Nat. Arb. Forum
Apr. 25, 2007) (holding that the use of a confusingly similar domain name to
display links to various third-party websites demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)). Respondent’s <gerberplumbingfixtures.com>
domain name resolves to a website that contains hyperlinks to Complainant’s
competitors. Respondent likely receives
click-through fees from these pay-per-click hyperlinks. Internet users may become confused as to Complainant’s
sponsorship of, or affiliation with, the disputed domain name and resolving
website. The Panel concludes that
Respondent’s use of the <gerberplumbingfixtures.com> domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gerberplumbingfixtures.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 17, 2010
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