Innovation First, Inc. v.Milan Kovac
Claim Number: FA1105001390082
Complainant is Innovation First, Inc. (“Complainant”), represented by Christopher J. Bischoff of Bischoff & Associates, Ltd., Illinois, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hexbugnano.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2011; the National Arbitration Forum received payment on May 23, 2011. The Complaint was submitted in both Slovak and English.
On May 25, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <hexbugnano.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 has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.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 June 2, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of June 22, 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@hexbugnano.com. Also on June 2, 2011, the Slovak 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 June 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <hexbugnano.com> domain name is confusingly similar to Complainant’s HEXBUG mark.
2. Respondent does not have any rights or legitimate interests in the <hexbugnano.com> domain name.
3. Respondent registered and used the <hexbugnano.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Innovation First, Inc., manufactures robotic toys sold under the HEXBUG NANO name. Complainant holds a trademark registration for its HEXBUG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,499,757 issued September 9, 2008).
Respondent, Milan Kovac, registered the <hexbugnano.com> domain name on December 10, 2009. The disputed domain name resolves to a website featuring sponsored commercial links to unrelated third party websites.
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 holds a trademark registration for its HEXBUG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,499,757 issued September 9, 2008). A federal trademark registration is sufficient to establish Complainant’s rights in a mark. 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 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). In order to establish rights under Policy ¶ 4(a)(i), a complainant is not required to register a trademark in the country where a respondent resides. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Based on this precedent, the Panel finds that Complainant has established rights in its HEXBUG mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <hexbugnano.com> domain name is confusingly similar to Complainant’s HEXBUG mark. The disputed domain name wholly incorporates Complainant’s mark, which is sufficient in and of itself to meet Policy ¶ 4(a)(i)’s “confusingly similar” standard. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Respondent’s addition of the term “NANO” to Complainant’s mark in the disputed domain name creates further confusion, given that Complainant already manufactures and markets a product called “HEXBUG NANO.” The Panel finds that the addition of the term “NANO” is insufficient to distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark, which the Panel finds is irrelevant to a Policy ¶ 4(a)(i) analysis because top-level domains are required in any domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel concludes that Respondent’s <hexbugnano.com> domain name is confusingly similar to Complainant’s HEXBUG mark, according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lack rights or legitimate interests in the disputed domain name. It is well-settled that once Complainant presents a prima facie case, the burden shifts to Respondent to prove it does in fact have such rights or legitimate interests. 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’s failure to respond to the complaint is strong evidence that it lacks the requisite rights or legitimate interests in the disputed domain name as required by Policy ¶ 4(c). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will still examine the record to determine if such rights or legitimate interests exist pursuant to Policy ¶ 4(c).
Complainant also alleges that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent as “Milan Kovac,” which is not similar to the disputed domain name. Because Respondent has failed to file a response, there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name, nor is there any evidence of any authorization to use the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <hexbugnano.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent is using the <hexbugnano.com> domain name to resolve to a website containing sponsored commercial links to unrelated third party websites, for which Respondent likely receives click-through fees. The Panel determines that Respondent’s use of a confusingly similar domain name is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Texas 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent has intentionally created a likelihood of confusion by using Complainant’s mark in its domain name in an effort to attract Internet users to its resolving website for commercial gain. Complainant further alleges that this is evidence of registration and use in bad faith, for the purposes of Policy ¶ 4(b)(iv), particularly Policy ¶ 4(b)(iv)’s “Attraction for Commercial Gain” element. The Panel concurs in its judgment, inferring that Respondent receives click-through fees from the links on its website, and ruling that Respondent’s use of the disputed domain name constitutes bad faith for the purposes of Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that 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 <hexbugnano.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 29, 2011
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