San Mar Corporation v. Ho Nim
Claim Number: FA1009001347606
Complainant is San Mar Corporation ("Complainant"), represented by Parna A. Mehrbani of Lane Powell PC, Oregon, USA. Respondent is Ho Nim ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sannmar.com>, registered with Above.Com Pty 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 September 21, 2010; the National Arbitration Forum received payment on September 21, 2010.
On September 21, 2010, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <sannmar.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@sannmar.com. Also on September 23, 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 October 27, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <sannmar.com> domain name is confusingly similar to Complainant’s SANMAR mark.
2. Respondent does not have any rights or legitimate interests in the <sannmar.com> domain name.
3. Respondent registered and used the <sannmar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, San Mar Corporation, owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its SANMAR mark (Reg. No. 2,519,993 issued December 18, 2001) in connection with wholesale distributorships featuring clothing and apparel, cooperative advertising and marketing services and information and advice in the fields of sales and marketing.
Respondent, Ho Nim, registered the disputed domain name on February 27, 2010. The disputed domain name resolves to a website featuring pay-per-click links to third parties unrelated to Complainant.
Complainant has submitted evidence that Respondent has been the respondent in multiple prior UDRP proceedings resulting in the transfer of those domain names to the respective complainant’s in those cases. See Carquest Corp. v. Ho Nim, FA 1317916 (Nat. Arb. Forum May 18, 2010); see also The Valspar Corp. v. Ho Nim, FA 1319987 (Nat. Arb. Forum June 3, 2010).
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 SANMAR mark based on its registration of the mark with the USPTO (Reg. No. 2,519,993 issued December 18, 2001). The Panel finds that Complainant’s registration of the SANMAR mark with a governmental trademark authority such as the USPTO is sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel also finds that it is irrelevant whether Complainant’s mark is registered in the country where Respondent resides or operates. See 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 <sannmar.com> domain name is confusingly similar to Complainant’s SANMAR mark. The disputed domain name merely adds an additional “n” to Complainant’s mark along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that these minor alterations are not sufficient to distinguish Respondent’s disputed domain name from Complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); 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). Therefore, the Panel concludes that Respondent’s <sannmar.com> domain name is confusingly similar to Complainant’s SANMAR mark for the purpose of Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <sannmar.com> domain name. The burden shifts to Respondent to prove that it does not have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. 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)). Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) in order to make a determination as to whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has never used the SANMAR mark to identify its business and has never been commonly known by the SANMAR mark. The WHOIS information indicates that the registrant of the <sannmar.com> domain name is “Ho Nim.” The Panel finds that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Therefore the Panel concludes that, Complainant’s allegations, coupled with the WHOIS information, establish that Respondent lacks rights and legitimate interests in the disputed domain name pursuant 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 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).
Complainant argues that Respondent’s <sannmar.com> domain name resolves to a website featuring third-party links to websites unrelated to Complainant. Complainant submits screenshots of Respondent’s resolving websites which contain links to a variety of products and services that include references to the term “San,” including storage area network services, San Francisco, San Esx, and San Price. Complainant asserts that Respondent likely gains commercially from the displayed links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to profit from third-party pay-per-click links is not 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). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant asserts that Respondent is using a typosquatted version of Complainant’s SANMAR mark in the <sannmar.com> domain name which contains a common misspelling of Complainant’s mark. The Panel finds that Respondent’s typosquatting is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has submitted evidence that Respondent, Ho Nim, has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants. See Carquest Corp. v. Ho Nim, FA 1317916 (Nat. Arb. Forum May 18, 2010); see also The Valspar Corp. v. Ho Nim, FA 1319987 (Nat. Arb. Forum June 3, 2010). The Panel finds that multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and are evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); 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 Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant argues that by using the <sannmar.com> domain name and creating a likelihood of confusion with Complainant’s SANMAR mark, Respondent has attempted to attract, for commercial gain, Internet users to its website. Complainant further argues that Respondent’s resolving website is likely create confusion as to the source, sponsorship, affiliation, or endorsement of the website and its displayed links. Complainant presumes, and the Panel agrees, that Respondent earns click-through fees when Internet users’ select one of the displayed links. The Panel finds that Respondent’s behavior in registering and using the <sannmar.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). 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 The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
As established previously, Respondent has engaged in the practice of typosquatting by registering a domain name that contains a common misspelling of Complainant’s mark. The Panel finds that typosquatting, on its own, is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sannmar.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 4, 2010
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