Nourison Industries, Inc. v. Rampe Purda
Claim Number: FA1101001366079
Complainant is Nourison Industries, Inc. (“Complainant”), represented by Karin Segall of Leason Ellis LLP, New York, USA. Respondent is Rampe Purda (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nourisonrug.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 4, 2011; the National Arbitration Forum received payment January 4, 2011. The Complaint was submitted in both Finnish and English.
On January 9, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <nourisonrug.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2011, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of February 7, 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@nourisonrug.com. Also on January 18, 2011, the Finnish language 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 February 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 by Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <nourisonrug.com>, is confusingly similar to Complainant’s NOURISON POWERLOOM mark.
2. Respondent has no rights to or legitimate interests in the <nourisonrug.com> domain name.
3. Respondent registered and used the <nourisonrug.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nourison Industries, Inc., offers comprehensive programs from signature handmade area rug collections to prestige designer lines like Calvin Klein. Complainant provides merchandise assortments in virtually every price and construction category to prominent retailers throughout the United States and Europe. Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the NOURISON POWERLOOM mark (Reg. No. 2,365,974 issued July 11, 2000).
Respondent, Rampe Purda, registered the <nourisonrug.com> domain name April 16, 2009. The disputed domain name resolves to a website that offers pay-per-click links to third-party websites, some of which offer products that compete with Complainant’s products.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns a USPTO registration for the NOURISON POWERLOOM mark (Reg. No. 2,365,974 issued July 11, 2000). The Panel finds that a USPTO trademark registration is conclusive evidence of Complainant’s rights in the NOURISON POWERLOOM mark for the purposes of Policy ¶ 4(a)(i), irrespective of the location of Respondent’s residence or business operations. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant contends that Respondent’s <nourisonrug.com> domain name is confusingly similar to Complainant’s NOURISON POWERLOOM mark because the only modifications are the replacement of the term “powerloom” with the term “rug,” the deletion of the space, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither adding nor deleting a term from Complainant’s mark removes the disputed domain name from the realm of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel also finds that deleting a space and attaching a gTLD are inconsequential changes under a Policy ¶ 4(a)(i) analysis. See 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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <nourisonrug.com> domain name is confusingly similar to Complainant’s NOURISON POWERLOOM mark pursuant to Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant also alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant must make a prima facie case to support these allegations and once Complainant does so, the burden of proof to show such rights and legitimate interests shifts to Respondent, under a Policy ¶ 4(a)(ii) analysis. The Panel finds that Complainant met this obligation in this proceeding. Respondent, however, has not presented any evidence showing rights or legitimate interests because it failed to respond. The Panel accordingly finds that Respondent has not shown any rights and legitimate interests in the disputed name. Notwithstanding, this Panel still examines the evidence to see if it suggests under analysis with the Policy ¶ 4(c) factors that Respondent has such rights or interests. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”).
Complainant asserts that Respondent is not commonly known by the <nourisonrug.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Rampe Purda,” a name with no apparent connection to the disputed domain name. The Panel consequently concludes that Respondent is not commonly known by the <nourisonrug.com> domain name and does not have rights and legitimate interests under a Policy ¶ 4(c)(ii) analysis. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant further contends that Respondent uses the <nourisonrug.com> domain name as part of a business that derives profit from the click-through fees that result from diverting Internet users to competing third-party websites through the advertised pay-per-click links. The Panel finds that such a commercial use of the misappropriated disputed domain name does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant argues that the website resolving from Respondent’s <nourisonrug.com> domain name contains specific references to Complainant and Complainant’s products in the form of pay-per-click links, such as “Nourison,” “Rugs,” “Braided Rugs,” and “Area Rugs.” Complainant asserts that Respondent uses the disputed domain name and resolving website in this manner in order to facilitate competition with Complainant by diverting Internet users to competing websites. The Panel finds these activities support findings of bad faith registration and use according to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also contends that Respondent intentionally uses the <nourisonrug.com> domain name to attract Internet users seeking Complainant who might type the descriptive word “rug” into the domain name or search engine. Complainant alleges that the many pay-per-click links using Complainant’s NOURISON mark or referring to products Complainant sells create the likelihood of confusion with Complainant. Complainant argues that Respondent receives commercial gain from this website in the form of click-through fees generated by the many pay-per-click links. The Panel accordingly finds that such use supports findings of bad faith registration and use 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)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <nourisonrug.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 23, 2011.
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