national arbitration forum

 

DECISION

 

UgroupMedia Inc. v. Oversee Domain Management, LLC / Admin

Claim Number: FA1011001356032

 

PARTIES

Complainant is UgroupMedia Inc. (“Complainant”), represented by Pierre-Emmanuel Moyse,Canada.  Respondent is Oversee Domain Management, LLC / Admin (“Respondent”), represented by William A. Delgado of Willenken Wilson Loh & Lieb LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <portablenorthpole.com> and <pnpportablenorthpole.com>, registered with NameKing, Inc.

 

PANEL

 

The undersigned certifies that he 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.

 

Fernando Triana Esq. as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2010; the National Arbitration Forum received payment on November 2, 2010.

 

On November 4, 2010, NameKing, Inc. confirmed by e-mail to the National Arbitration Forum that the <portablenorthpole.com> and <pnpportablenorthpole.com> domain names are registered with NameKing, Inc. and that Respondent is the current registrant of the name.  NameKing, Inc. has verified that Respondent is bound by the NameKing, Inc. 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 November 8, 2010, Complainant filed an Amended Complaint.

 

On November 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@portablenorthpole.com, postmaster@pnpportablenorthpole.com.  Also on November 9, 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.

 

A timely Response was received and determined to be complete on November 29, 2010.

 

On December 1, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana Esq. as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

1.      Respondent’s <portablenorthpole.com> and <pnpportablenorthpole.com> Domain Names are confusingly similar to Complainant’s “PNP PORTABLE NORTH POLE” trademark because it fully incorporates Complainant’s mark followed by the top level Domain Name extension “.com”, neither of which makes the Domain Names distinct.

 

2.      Respondent has no rights or legitimate interest in respect of the Domain Names. Any value that the Domain Names may have is derived solely by the incorporation of the Complainant’s PNP PORTABLE NORTH POLE trademark.

 

Under the ICANN Policy, when the Complainant has made a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed Domain Name, the burden shifts to the Respondent to prove that it has rights in the name.

 

Respondent cannot demonstrate any rights or legitimate interests in the disputed Domain Name.

 

3.      Respondent’s main activity is the buying and selling of domain names. The disputed Domain Names are parked and have no real purpose other than to derive traffic.

 

4.      Respondent is engage in a pattern of registering domain names that infringe third parties’ trademarks.

 

5.      The profit sought by parking domain names is in itself evidence of bad faith.

 

B. Respondent

 

1.                  Respondent owns a portfolio of generic domain names which it acquired through lawful and fair methods. As part of its business practice, it had a well-known dispute resolution policy whereby it invites complainants to contact it regarding domain names that may violate a trademark.

 

2.                  Respondent has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names.

 

3.                  Respondent, without admitting fault or liability and without responding substantively to the allegations raised by Complainant, stipulates that it is willing to transfer the Disputed Domain Names to the Complainant.

 

4.                  Respondent requests that the Domain Names be transferred to Complainant without further findings of fact or liability.

 

FINDINGS

 

The Panel will refer in depth to Respondent’s request of ordering the transfer of the Disputed Domain Names without further findings of fact or liability.

 

This Panel will also analyze Complainant’s contentions according to the Policy and wants to highlight that any business activity should be carried with responsibility and without violating third party rights.

 

DISCUSSION

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

The first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant alleges that it holds several trademark registrations. As it is proven with the evidence filed with the Complaint, it is a fact that the Complainant is the owner of the following trademark registrations:

 

·        PNP PORTABLE NORTH POLE, registered in Canada on October 7, 2010 under the Certificate TMA779.359, first use on November 24, 2008.

 

·        PNP PERE NOEL PORTABLE, registered in Canada on October 7, 2010 under the Certificate TMA779.360, first use on November 24, 2008.

 

·        PNP PORTABLE NORTH POLE, registered in Europe on October 19, 2010 under the Certificate 009023681, first use on November 24, 2008.

 

Additionally, Complainant is the owner of trademark registration applications that are currently pending:

 

·        PNP PORTABLE NORTH POLE, filed before the United States Patent and Trademark Office on April 12, 2010, File Number 85011847, first use on November 24, 2008.

 

·        PNP PERE NOEL PORTABLE, filed before the Canadian Trademark Office in March 16, 2010, File Number 1473403, first use on November 24, 2008.

 

Complainant states that the disputed Domain Names are confusingly similar to the referenced trademark pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same.

 

Complainant also states that its trademark is distinctive and unique. The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

The existing trademark registrations gives Complainant legitimate right to file the complaint under examination.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive^[1]. Complainant’s registration appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.

 

Respondent has the burden of refuting this assumption^[2], however, Respondent did not made any substantive statement regarding Complainant’s assertions.

 

Before establishing whether or not the disputed Domain Name is confusingly similar to the Complainant’s registered trademark, the sole panelist wants to point out that the addition of generic top-level domains (gTLD), i.e., .com, .biz, .edu, .org cannot be taken into consideration when studying if the registered Domain Name is confusingly similar to the registered trademark.

 

As it has been repeatedly accepted by UDRP Panels the existence of the “. com” generic top-level domain (gTLD), in the disputed Domain Name is not a factor for purposes of determining that a disputed Domain Name is not identical or confusingly similar to the mark in which the Complainant asserts rights.

 

“In the strictest sense, the Domain Name lumena.com is not identical to the trademark Lumena. The former includes a top level domain “.com” while the word Lumena stands alone in the latter. However, where the addition of it top-level domain appeared the Domain Name was the one that most closely described that nature of trademark (i.e.; “com” representing a commercial enterprise). The virtual identically seemed sufficient to satisfy the first element of paragraph 4 (a)(i) of the Policy” ^[3]

 

At this point, the Panel wish to stress that according to Policy, what is important is the existence of a trademark registration and that the disputed domain is identical or confusingly similar to the registered trademark. In fact, Policy 4(a)(i) considers only whether Complainant has rights in the mark and whether the disputed Domain Name is identical or confusingly similar to Complainant’s mark.

 

In the present case, the disputed Domain Names reproduces entirely Complainant’s trademarks PNP PORTABLE NORTH POLE.

 

UDRP panels have recognized that reproducing a trademark in its whole is sufficient to establish that a Domain Name is identical or confusingly similar to the Complainant's registered mark. This Panel finds that the disputed Domain Names are in fact identical or confusingly similar to the Complainant's registered trademark.

 

Complainant’s trademarks PNP PORTABLE NORTH POLE are entirely reproduced in the Respondent´s Domain Names <portablenorthpole.com> and <pnpportablenorthpole.com>.

 

The Panel concludes that the Domain Names <portablenorthpole.com> and <pnpportablenorthpole.com> are confusingly similar to Complainant’s PNP PORTABLE NORTH POLE trademarks pursuant to Policy 4(a)(i). The evidence establishes Complainant’s rights in the PNP PORTABLE NORTH POLE trademark for purposes of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the Domain Name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(ii).

 

Complainant claims that the Respondent has no rights or legitimate interests over the Domain Names in dispute. At the same time, Complainant proved that he has rights and legitimate interest in the <portablenorthpole.com> and <pnpportablenorthpole.com> Domain Names.

 

Respondent did not make any substantive statement regarding Complainant’s assertions.

 

The Panel has also verified the evidence filed by Complainant regarding the ownership of the above mentioned Domain Names, finding that they are in fact, owned by the Respondent.

 

As for the use of the mentioned Domain Names, this Panel found that the Domain Names <portablenorthpole.com> and <pnpportablenorthpole.com> are not in use. The Respondent has not provided any evidence that may lead this Panel to believe that he is using or preparing to start using the disputed Domains in connection to a bona fide offering of goods or services. He failed to prove also that he is commonly known by the Domain Name and that he is making a non commercial or fair use of the Disputed Domain.

 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names <portablenorthpole.com> and <pnpportablenorthpole.com> and thus, Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.

 

Complainant claims that the Respondent registered the disputed Domain Names with the purpose of selling them at a high price. This Panel have verified the accuracy of the statement referred to by Complainant, according to which, Mr. Kupetzky, CEO of Oversee.net, stated that:

 

“We’re looking for names that have traffic, that have users that come to that site. Because for us we can put advertising on that, and that provides very good cash flow for us”.

 

The above cited statement is still available at the oversee.net website[4] (see Exhibit M) and is good evidence about the Respondent’s intentions when registering the disputed Domain Names.

 

Respondent have shown its intention of transferring the disputed Domain Names to Complainant voluntarily. Respondent also requested for this Panel to order the transfer of the disputed Domains, without further findings.

 

This Panel considers that Respondent’s requests in the sense of ordering the Domain Names to be transferred without making any further findings is not acceptable.

 

Even if this Panel agrees on the fact that consent by Respondent to transfer provides a sufficient basis for an order for transfer and for concluding the proceeding without deciding whether the requirements of paragraph 4(a) are met, the sole Panelist also considers that companies and individuals that are making business on the Internet, should be responsible enough to avoid causing damages to third parties and should not take advantage of a third party’s good name. Therefore, this Panel will analyze all grounds.

 

This Panel has enough evidence of Respondent’s real intentions when registering the Disputed Domain names. The statements of the Respondent’s CEO, reproduced by the Complainant in its Complaint, clearly show that the Respondent’s activity includes the registration of domain names with the purpose of obtaining economic profit.

 

Exhibit K, filed with the Complaint shows that the Respondent used the domain name to obtain gains on a “pay per click” basis.

 

Exhibit M, also refers to the video in which the Respondent’s CEO, Mr. Kupetzky, referred to the strategy consisting in monitoring domains with high traffic as a way of obtaining high incomes for advertising posting.

 

The Respondent registered the <portablenorthpole.com> on December 8, 2008, just two (2) days after the official marketing campaign for the “PNP PORTABLE NORTH POLE OPERATION” was launched. The <pnpportablenorthpole.com> Domain Name was registered on December 18, 2008, also following the marketing campaign initiated by the Complainant to promote its services. The marketing strategy created by the Complainant, was reflected in media coverage as shown in Exhibit F, an turned to be very successful as shown in Exhibit G filed with the Complaint. [5]

 

The Panel wants to stress that the Respondent did not challenged any of Complainant’s assertions and did not filed any evidence to prove that these were not accurate. Therefore, based on the available evidence, as described above, it is clear to this Panel that Respondent had knowledge about Complainant’s trademark and activity. Otherwise, it is hard to understand why the Disputed Domain names were registered shortly after Complainant’s successful campaigns were launched on the internet.

 

This, along with the evidence filed by the Complainant, is enough prove of Respondent’s real intentions when registering the disputed Domain Names.

 

It is considered 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, constitutes bad faith under Policy 4(b)(iv)[6].

 

Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4 (a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <portablenorthpole.com> and <pnpportablenorthpole.com> domain names.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <portablenorthpole.com> and <pnpportablenorthpole.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana Esq. Panelist

Dated:  December 15, 2010