national arbitration forum

                

               DECISION

 

Christopher F. Reda v. Ladislav Januska

Claim Number: FA1012001362849

 

                   PARTIES

Complainant is Christopher F. Reda (“Complainant”), represented by Kirk D. Houser of Eckert Seamans Cherin & Mellott, LLC, Pennsylvania, USA.  Respondent is Ladislav Januska (“Respondent”), Czech Republic.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <theneocube.org>, <neocube.org>, and <216neocube.com>, registered with Moniker Online Services, Inc.

                    

                   PANEL

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.

 

Robert T. Pfeuffer, Senior District Judge, as Panelist.

 

                   PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2010; the National Arbitration Forum received payment on December 10, 2010.

 

On December 14, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <theneocube.org>, <neocube.org>, and <216neocube.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 December 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2011 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@theneocube.org, postmaster@neocube.org, and postmaster@216neocube.com.  Also on December 20, 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 January 10, 2011.

 

         On January 14, 2011,, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge, as Panelist.

 

                   RELIEF SOUGHT

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

 

                   PARTIES' CONTENTIONS

A. Complainant

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant, Christopher F. Reda, states that it provides manipulative puzzles made of magnets under the NEOCUBE mark in the United States and in various foreign countries.  Complainant asserts rights in the NEOCUBE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,626,790 filed March 9, 2008; issued May 26, 2009).

 

Complainant contends the <neocube.org> domain name is identical to its NEOCUBE mark.  Complainant argues that Respondent replicates its mark in the disputed domain name and then simply affixes the generic top-level domain (“gTLD”) “.org” to the mark.

 

Complainant further contends the <theneocube.org> and <216neocube.com> domain names are confusingly similar to its NEOCUBE mark.  Complainant avers that Respondent fully incorporates its mark in the disputed domain names.  Complainant states that Respondent then adds the article “the” to its mark in the <theneocube.org> domain name and the numerals “216” to its mark in the <216neocube.com> domain name.  Finally, Respondent affixes the gTLDs “.org” and “.com” to Complainant’s mark in the disputed domain names.

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant states that the <theneocube.org> domain name resolves to a website that offers manipulative puzzles made of magnets that compete with Complainant’s puzzles.  Complainant claims the resolving website contains text that reads, “Are you looking for an original magnetic puzzle toy which is composed of 216 pcs individual high energy neodymium magnets sphere?”  Similarly, Complainant asserts the <neocube.org> domain name resolves to a website that provides text that reads, “neocube is the latest must-have puzzle” and “neocube magnet sphere toy – the neo cube is the latest must-have puzzle!”  Finally, Complainant claims the website resolving from the <216neocube.com> domain name contains the text, “Our factory for neocube is located in China.  If you looking for competitive price from manufacturer contact us…The NeoCube is an amazing toy for all ages composed of 216 pcs individual magnets ball…Most other games as rubik’s cube, puzzles etc. have only one solution.  With the NeoCube you can spend one life and you will be not able to finishd all solution.”

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s NEOCUBE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or a product on Respondent’s websites.

 

 

B. Respondent

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

 Respondent contends that the <theneocube.org>, <neocube.org>, and <216neocube.com> domain names are comprised of a common and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark. Such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.     

 

Respondent argues that the terms in the <theneocube.org>, <neocube.org>, and <216neocube.com> domain names are common and generic.  Respondent claims that people in eastern European countries use “neocube” as a generic name for magnetic sphere toys.  Respondent further claims that it is so generic that it cannot be protected or registered as a trademark in the European Union.  Respondent provides a list of multiple domain names that incorporate the “neocube” term, including <www.neocube.cz>, <www.neocube.de>, <www.neocube.pl>, <www.neocube.ru>, and <www.leneocube.com>.  Therefore, Respondent contends that Complainant does not have an exclusive monopoly on the term on the Internet. 

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Respondent argues that the term in the <theneocube.org>, <neocube.org>,and<216neocube.com> domain names are common and generic.  Respondent claims that people in eastern European countries use “neocube” as a generic name for magnetic sphere toys.  Respondent further claims that it is so generic that it cannot be protected or registered as a trademark in the European Union.  Respondent provides a list of multiple domain names that incorporate the “neocube” term, including <www.neocube.cz>, <www.neocube.de>, <www.neocube.pl>, and <www.neocube.ru>. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Respondent contends that the <theneocube.org>, <neocube.org>, and <216neocube.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s NEOCUBE mark.  Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.   

 

 

  1. Additional Submissions

 

Both Complainant  and Respondent have filed Additional Submissions which the Panel has fully considered and found to be very helpful in deciding this case.

 

                   FINDINGS

 

Upon the evidence submitted the panel finds:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to the  trademark or service mark in which Complainant has rights;

(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.

 

                   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 canceled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to the  trademark or service mark in which Complainant has rights;

(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: Policy ¶ 4(a)(i).

Complainant has provided evidence of a trademark registration.  The Panel finds this trademark registration sufficiently proves Complainant’s rights in the NEOCUBE 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 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 Complainant’s rights in the NEOCUBE mark date back to the filing date of its trademark application with the USPTO.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).  Finally, the Panel has determined that it is irrelevant whether Complainant registered the NEOCUBE mark with the trademark authority in the country in which Respondent resides.  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 contends the <neocube.org> domain name is identical to its NEOCUBE mark.  Complainant argues that Respondent replicates its mark in the disputed domain name and then simply affixes the generic top-level domain (“gTLD”) “.org” to the mark.  The Panel finds that the affixation of a gTLD to a mark does not render a domain name distinct from the mark.  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).  Therefore, the Panel finds that Respondent’s <neocube.org> domain name is identical to Complainant’s NEOCUBE mark under Policy ¶ 4(a)(i).

 

While Respondent contends that the <theneocube.org>, <neocube.org>, and <216neocube.com> domain names are comprised of a common and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The WHOIS information lists “Ladislav Januska” as the registrant of the disputed domain names, which the Panel finds is not similar to the <theneocube.org> domain name, the <neocube.org> domain name, or the <216neocube.com> domain name.  The Panel concludes that Respondent is not commonly known by the disputed domain names under 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 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).

 

Complainant states that the <theneocube.org> domain name resolves to a website that offers manipulative puzzles made of magnets that compete with Complainant’s puzzles. Complainant claims the resolving website contains text that reads, “Are you looking for an original magnetic puzzle toy which is composed of 216 pcs individual high energy neodymium magnets sphere?”  Similarly, Complainant asserts the <neocube.org> domain name resolves to a website that provides text that reads, “neocube is the latest must-have puzzle” and “neocube magnet sphere toy – the neo cube is the latest must-have puzzle!”  Finally, Complainant claims the website resolving from the <216neocube.com> domain name contains the text, “Our factory for neocube is located in China.  If you looking for competitive price from manufacturer contact us…The NeoCube is an amazing toy for all ages composed of 216 pcs individual magnets ball…Most other games as rubik’s cube, puzzles etc. have only one solution.  With the NeoCube you can spend one life and you will be not able to finishd all solution.”  The Panel finds that Respondent uses the disputed domain name to resolve to websites that offer for sale counterfeit versions of Complainant’s NEOCUBE puzzles.   Therefore, the Panel concludes that Respondent does not use the <theneocube.org>, <neocube.org>, and <216neocube.com> domain names to make 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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000).

 

                         Registration and Use in Bad Faith

 

The Panel finds that Respondent uses the disputed domain names to redirect Internet users seeking Complainant’s official puzzles to websites that offer for sale counterfeit versions of these puzzles.  Consequently, the Panel  determines that Respondent’s <theneocube.org>, <neocube.org>, and <216neocube.com> domain names disrupt Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii).  See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

                   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 <theneocube.org>, <neocube.org>, <216neocube.com> domain names be transferred from Respondent to Complainant.

 

 

 ROBERT T. PFEUFFER, Panelist

Dated: January 31, 2011


 

 

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