Sai Maa v. Domain Finance Inc. / Minakumari Periasamy
Claim Number: FA1105001390126
Complainant is Sai Maa (“Complainant”), represented by Stephen H. Sturgeon of The-Internet-Lawyers.com, P.C., Maryland, USA. Respondent is Domain Finance Inc. / Minakumari Periasamy (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saimaa.com>, registered with eNom, Inc.
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 May 23, 2011; the National Arbitration Forum received payment May 23, 2011.
On May 23, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <saimaa.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@saimaa.com. Also on May 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 June 16, 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, <saimaa.com>, is identical to Complainant’s SAI MAA mark.
2. Respondent has no rights to or legitimate interests in the <saimaa.com> domain name.
3. Respondent registered and used the <saimaa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sai Maa, is a famous author, speaker, and teacher. Complainant has used its proper name since at least 2000 in support of its books and educational materials. Complainant’s books and educational materials are distributed globally under its SAI MAA mark.
Respondent, Domain Finance Inc. / Minakumari Periasamy, registered the disputed domain name April 29, 1998. The disputed domain name resolves to a commercial links site offering links to third-party websites unrelated to Complainant’s own enterprises. Respondent presumably collects click-through fees from the linked sites for each Internet user diverted.
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.
Under Policy ¶ 4(a)(i), Complainant is required to establish rights in the mark. Although trademark registrations are the primary avenue to do so, the Panel finds that a trademark registration is not required to establish rights under Policy ¶ 4(a)(i). See 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)). Here, the Complainant does not have registered trademark rights. Therefore, the Panel finds that Complainant may prove that it has obtained common law rights in the SAI MAA mark under Policy ¶ 4(a)(i) if it is able to establish that due to its efforts and development of the mark, a secondary meaning has attached to the mark associated with Complainant’s own business endeavors. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that it has established its rights in the SAI MAA mark dating back to as early as 2000. Complainant has used the SAI MAA mark in connection with books published, as well as educational materials created by it. Complainant has offered evidence in the form of brochures and web-based printouts that establish that the SAI MAA mark has been used in conjunction with its business ventures. Thus, the Panel finds that Complainant established a secondary meaning in the SAI MAA mark such as would support a finding that Complainant has common law rights in the mark under Policy ¶ 4(a)(i) dating back to 2000. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s disputed domain name is identical to its SAI MAA mark. The disputed domain name includes the entire mark while removing the space between “SAI” and “MAA,” and adding the generic top-level domain name “.com.” The Panel finds that removing a space and adding a gTLD to a mark do not sufficiently distinguish that mark from the disputed domain name. Therefore, Respondent’s disputed domain name and Complainant’s SAI MAA mark are identical under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds that the disputed domain name is identical to Complainant’s 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 case showing that Respondent does not have rights to or legitimate interests in the disputed domain name. Because of that, the burden of proof shifts to Respondent to show that it does have such rights to or legitimate interests in the disputed 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.”). Respondent has failed submit a response in this matter, which allows the Panel to assume it lacks rights or legitimate interests in the mark. 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, the Panel still examines the entire record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain name pursuant to the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence or submitted any information that would suggest that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Domain Finance Inc. / Minakumari Periasamy,” which does not indicate or support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also 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 disputed domain name. Respondent’s disputed domain name resolves to a website offering links to third-party sites unrelated to Complainant’s business. Respondent presumably collects a click-through fee for each Internet user diverted to the linked sites. The Panel finds that using the disputed domain name to run a commercial links site 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), respectively. 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
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 asserts that Respondent is using the disputed domain name for its own commercial gain, constituting bad faith use. Respondent’s disputed domain name resolves to a commercial site offering links to third party websites unrelated to Complainant’s business. Presumably, this arrangement allows Respondent to collect click-through fees from the linked sites for each Internet user that arrives at the confusingly similar domain name and is diverted on. The Panel finds that Respondent is gaining commercially from the use of the confusingly similar domain name constituting bad faith 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 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)).
Although Complainant established bad faith use, in this case, the Panel finds that Complainant’s rights by her own description vested in the SAI MAA mark in 2000 at the earliest. According to the WHOIS information, the disputed domain name was registered April 29, 1998; two years before Complainant was able to establish its common law rights in the mark. Because Respondent registered the disputed domain name before Complainant shows that she had established common law rights in her protected mark. The Panel finds that Complainant failed to show that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). Complainant has not shown rights in the mark prior to Respondent’s date of registration and the Panel has no evidence before it to show bad faith registration. See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
The Panel finds that while Complainant established bad faith use by Respondent of the domain name, Complainant failed to show bad faith registration under the elements of ICANN Policy ¶ 4(a)(iii).
Having failed to establish all three elements as required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <saimaa.com> domain name REMAIN WITH Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 30, 2011.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page