NaturaLawn of America, Inc. v. Scott Romack c/o lucen8.com
Claim Number: FA1007001334623
Complainant is NaturaLawn
of America, Inc. (“Complainant”), represented by John J. Dabney, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <naturalawn.info>, registered with Tucows, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2010.
On July 12, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <naturalawn.info> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@naturalawn.info. Also on July 19, 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 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 "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 <naturalawn.info> domain name is identical to Complainant’s NATURALAWN mark.
2. Respondent does not have any rights or legitimate interests in the <naturalawn.info> domain name.
3. Respondent registered and used the <naturalawn.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NaturaLawn of America, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,543,921 issued March 5, 2002) in connection with both pest control services and lawn care services, including organic based fertilizing and biological weed control services and mechanical and cultural renovation practices.
Respondent, Scott Romack c/o lucen8.com, registered the disputed domain name on January 4, 2007. The disputed domain name resolves to a website that purports to offer information about lawn care and advertises and offers lawn care services 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.
Complainant asserts rights in its NATURALAWN mark based on its registration of the mark with the USPTO (Reg. No. 2,543,921 issued March 5, 2002). Previous panels have determined that a complainant whose mark is registered with the USPTO has sufficient rights in the mark pursuant to 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 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.”). Therefore, the Panel determines that Complainant has rights in its NATURALAWN mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <naturalawn.info> domain name is identical to Complainant’s NATURALAWN mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.info.” Previous panels have determined that where a domain name contains a mark in its entirety and appends a gTLD, the domain name is identical to the complainant’s mark. 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 Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“). Therefore, the Panel finds that Respondent’s <naturalawn.info> domain name is identical to Complainant’s NATURALAWN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to respond to these proceedings. 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 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.”).
Complainant asserts that Respondent’s disputed domain name has not been licensed to use Complainant’s mark and is not affiliated with Complainant. The WHOIS information lists “Scott Romack c/o lucen8.com” and Complainant indicates that nothing in the WHOIS information implies that Respondent is commonly known by the disputed domain name. Previous panels have determined that where a complainant has not authorized or licensed the respondent to use the disputed domain name and where the WHOIS information does not indicate a relationship between the respondent and the disputed domain name, the respondent is not commonly known by the disputed domain name. Therefore, the Panel in this case finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent’s <naturalawn.info> domain name resolves to a website that purports to offer information about lawn care and advertises and offers lawn care services in competition with Complainant. Previous panels have concluded that where a respondent uses the disputed domain name to display click-through links to a complainant’s competitors, such use is not in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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). Therefore, in keeping with the above precedent, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using the disputed domain name to resolve to a website offering lawn care services in competition with Complainant. Previous panels have concluded that a respondent who uses a disputed domain name to display links to competitors of a complainant constitutes a disruption of the complainant’s business and is evidence of a respondent’s bad faith. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Therefore, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is using the disputed domain name to display click-through links to redirect Internet users to the website of one of Complainant’s competitors in the lawn care industry. The Panel presumes that Respondent is receiving click-through fees when Internet users access the website resolving from the disputed domain name and click on the displayed links. Previous panels have determined that registration and use of a disputed domain name to intentionally attract Internet users for a respondent’s own commercial gain is evidence of a respondent’s bad faith 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). In keeping with the above precedent, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
The Panel finds that 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 <naturalawn.info> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 20, 2010
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