N.V.E., Inc. v. Victor Shevchenko
Claim Number: FA1101001367410
Complainant is N.V.E., Inc. (“Complainant”), represented by Charles P. Guarino of Nicoll, Davis & Spinella, LLP, New Jersey, USA. Respondent is Victor Shevchenko (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yellow-swarm.com>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2011; the National Arbitration Forum received payment on January 12, 2011.
On January 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <yellow-swarm.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 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@yellow-swarm.com. Also on January 26, 2011, 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 February 18, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <yellow-swarm.com> domain name is confusingly similar to Complainant’s YELLOW SWARM mark.
2. Respondent does not have any rights or legitimate interests in the <yellow-swarm.com> domain name.
3. Respondent registered and used the <yellow-swarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, N.V.E., Inc., manufactures, distributes, and sells nutritional and dietary supplements. Complainant markets and sells its nutritional supplements under the YELLOW SWARM mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,797,859 issued December 23, 2003).
Respondent, Victor Shevchenko, registered the <yellow-swarm.com> domain name on October 26, 2006. The disputed domain name resolves to a website featuring hyperlinks to websites selling nutritional products that compete with Complainant’s business.
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 has submitted evidence of its registration of the YELLOW SWARM mark with the USPTO (e.g., Reg. No. 2,797,859 issued December 23, 2003). The Panel finds this submission to be sufficient in establishing rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel bases this determination on previous findings that registration of a mark with a federal trademark authority establishes rights in the mark. See 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.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that the <yellow-swarm.com> domain name is confusingly similar to its YELLOW SWARM mark. Respondent uses the two terms of Complainant’s mark and merely replaces the space between the terms with a hyphen. Additionally, Respondent placed the generic top-level domain (“gTLD”) “.com” at the end of Complainant’s mark. The insertion of a hyphen between terms and adding a gTLD to a registered mark are actions that fail to result in a unique domain name. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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 Policy ¶ 4(a)(i) has been established.
According to Policy ¶ 4(a)(ii), Complainant possesses the burden of proving that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has reached the prima facie showing threshold, the burden shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the <yellow-swarm.com> domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will examine the record to determine whether Respondent has established legitimate rights and interests in the disputed domain name under Policy ¶ 4(c).
Complainant’s assertion that Respondent is not commonly known by the <yellow-swarm.com> domain name has not been contradicted by Respondent. Furthermore, Complainant contends that it has not authorized Respondent to use the YELLOW SAWRM mark. The Panel can find no evidence in the record that would support a finding that Respondent is commonly known by the disputed domain name. The WHOIS information lists the registrant of the disputed domain name as “Victor Shevchenko,” which Complainant alleges is not similar to the <yellow-swarm.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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 uses the disputed domain name to redirect unsuspecting Internet users to its website, which features links to the websites of Complainant’s competitors in the distribution and sale of nutritional products. The Panel presumes that Respondent receives click-through fees for this misdirection. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name and resolving website to post links to various third-party website, most of which compete with Complainant’s nutritional supplement business. Complainant alleges that Respondent’s inclusion of hyperlinks negatively affects Complainant’s business because they link to the websites of Complainant’s competitors. Internet users intending to find and purchase Complainant’s product may purchase similar products from Complainant’s competitors because of Respondent’s disruption. The Panel finds Respondent’s use of the disputed domain name to be disruptive to Complainant’s business, which is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Lastly, Complainant contends that Respondent uses the disputed domain name to divert Internet users, via hyperlinks, to Respondent’s website. Because of this redirection, Complainant contends that Internet users are confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name’s resolving website and posted hyperlinks. The Panel presumes that Respondent benefits from this misdirection through the receipt of click-through fees. Therefore, the Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use 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).”).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yellow-swarm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 24, 2011
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