Aditya Birla Minacs Worldwide Inc. v Private Registrations Aktien Gesellschaft
Claim Number: FA1104001384653
Complainant is Aditya Birla Minacs Worldwide Inc. (“Complainant”), represented by Jesse Brown, Michigan, USA. Respondent is Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adityabirlaminacs.com>, registered with Network Solutions.
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 April 19, 2011; the National Arbitration Forum received payment April 19, 2011.
On April 20, 2011, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <adityabirlaminacs.com> domain name is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions verified that Respondent is bound by the Network Solutions 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 April 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@adityabirlaminacs.com. Also on April 25, 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 May 23, 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 from Respondent.
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, <adityabirlaminacs.com>, is confusingly similar to Complainant’s MINACS mark.
2. Respondent has no rights to or legitimate interests in the <adityabirlaminacs.com> domain name.
3. Respondent registered and used the <adityabirlaminacs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aditya Birla Minacs Worldwide, Inc., is a business consulting and HR services company. Complainant owns a registration for the MINACS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,661,062 issued December 17, 2002).
Respondent, Private Registrations Aktien Gesellschaft, registered the disputed domain name May 14, 2007. The disputed domain name resolves to a site offering links to third-party websites unrelated to Complainant’s business. Respondent likely receives click-through fees for operating this pay-per-click website.
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 contends that it established rights in the MINACS mark by registration of the mark with the USPTO. For purposes of the Policy, registration of a mark with the USPTO is sufficient proof that Complainant has legitimate rights in the mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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.”). The Panel finds that Complainant established rights in the MINACS mark under a Policy ¶ 4(a)(i) analysis by registering the mark with the USPTO (Reg. No. 2,661,062 issued December 17, 2002).
Complainant also contends that Respondent’s <adityabirlaminacs.com> domain name is confusingly similar to its MINACS mark. The disputed domain name includes the entire mark and adds distinctive and descriptive words, “aditya” and “birla,” along with the generic top-level domain (“gTLD”) “.com.” “Aditya” and “birla” also happen to be part of Complainant’s entire corporation name, making the addition of those terms to the disputed domain name even more confusing. The Panel finds that Respondent failed to differentiate its disputed domain name from Complainant MINACS’ mark and that the disputed domain name is confusingly similar to Complainant’s protected mark. See BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant has met its initial burden of proof by making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. After Complainant makes a prima facie case, the burden of proof then shits to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark. 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 did not file a response in this case, which allows this Panel to assume that Respondent lacks rights or 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.”). However, this Panel still examines the entire record before making a determination of Respondent’s rights or legitimate interests in the disputed domain name using the factors enumerated in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Private Registrations Aktien Gesellschaft” and Respondent offered no evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <adityabirlaminacs.com> domain name under a Policy ¶ 4(c)(ii) analysis. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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 also asserts that Respondent is not making a bona fide use of the disputed domain name and is not making a legitimate noncommercial or fair use of it. Respondent’s <adityabirlaminacs.com> domain name resolves to a links page offering links to third-party websites unrelated to Complainant’s business. Presumably, Respondent’s collects revenue from operating this pay-per-click website. The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also asserts that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Respondent’s disputed domain name resolves to a site offering links to third party websites unrelated to Complainant’s business. Respondent presumably collects revenue from the operation of this pay-per-click site, which previous panels have also found is evidence of bad faith registration and use under 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 <adityabirlaminacs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 1, 2011.
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