national arbitration forum

 

DECISION

 

News India USA, LLC v. Chandra R

Claim Number: FA1102001371036

 

PARTIES

Complainant is News India USA, LLC (“Complainant”), represented by Michael J. Feldman of Olender Feldman LLP, New Jersey, USA.  Respondent is Chandra R (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <newsindiatimes.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2011; the National Arbitration Forum received payment on February 3, 2011.

 

On February 3, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <newsindiatimes.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 February 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@newsindiatimes.com.  Also on February 10, 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 March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <newsindiatimes.com> domain name is identical to Complainant’s NEWS INDIA TIMES mark.

 

2.    Respondent does not have any rights or legitimate interests in the <newsindiatimes.com> domain name.

 

3.    Respondent registered and used the <newsindiatimes.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, News India USA, LLC, distributes a weekly newsletter on-line and in hard copy covering issues relating to, and of concern to, Indian-Americans.  Complainant has been engaged in this field since 1975 and has continuously used the NEWS INDIA TIMES mark since that time. 

 

Respondent, Chandra R, registered the disputed domain name on July 16, 2002.  Respondent’s <newsindiatimes.com> domain name resolves to a site offering links to third-party sites unrelated to Complainant’s business. Respondent presumably collects click-through fees from the linked sites.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant does not own a registration for its NEWS INDIA TIMES mark.  Previous panels have determined that registration with a federal trademark authority is not a requirement to establish rights in a mark.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).  Therefore, this Panel finds that registration of that mark is unneccesary to establish defendable rights under the Policy.

 

Complainant has used the NEWS INDIA TIMES mark to sell its newsletter since 1975.  Previous panels have found that continuous use of a mark in connection with a business will create a sufficient secondary meaning so as to establish common law rights in the mark.  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).  The Panel finds that Complainant has established its common law rights in the mark pursuant to Policy ¶ 4(a)(i) by continuously using the mark in support of its business for over 35 years.

 

Complainant contends that Respondent’s <newsindiatimes.com> domain name is identical to its own NEWS INDIA TIMES mark.  The disputed domain name incorporates the entire mark while only removing the spaces and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent has failed to differentiate its disputed domain name from Complainant’s mark thereby making them identical under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES).

 

The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), after Complainant has met its burden of proof, which it has in this case, by making a prima facie case against Respondent, the burden then shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name.  See 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)).  Respondent has not rebutted Complainant’s prima facie case or even filed an answer to the Complaint which allows this Panel to assume that Respondent lacks rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  The Panel will still examine the entire record to make a determination on Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).

 

Policy ¶ 4(c)(ii) allows Respondent to prove its rights in the <newsindiatimes.com> domain name if it can make a sufficient showing that it is commonly known by that name.  Respondent has offered no evidence which would support a finding that it is commonly known by the disputed domain name.  The WHOIS information identifies registrant in this case as “Chandra R,” which this Panel finds is not similar to the disputed domain name.  Therefore, the Panel determines that Respondent is not commonly known by the <newsindiatimes.com> 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 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).

 

Complainant contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <newsindiatimes.com> domain name.  Respondent’s disputed domain name resolves to a site offering links to third-party websites unrelated to Complainant and presumably receives click-through fees from the linked sites.  The Panel finds that this usage does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <newsindiatimes.com> domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent uses the disputed domain name for its own commercial gain constituting bad faith registration and use.  Respondent’s <newsindiatimes.com> domain name resolves to a links directory listing multiple third-party websites unrelated to Complainant.  Respondent presumably collects a click-through fee for each internet users diverted to the linked sites.  The Panel finds that Respondent’s use of the disputed domain name for its own commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); 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 the requirements of Policy ¶ 4(a)(iii) have been satisfied.

 

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 <newsindiatimes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  March 9, 2011

 

 

 

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