Globe Union (Bermuda) Trading Ltd. v. Pantages Inc / Pantages
Claim Number: FA1106001391669
Complainant is Globe Union (Bermuda) Trading Ltd. (“Complainant”), represented by Glenn A. Rice of Funkhouser Vegosen Liebman & Dunn Ltd., Illinois, USA. Respondent is Pantages Inc / Pantages (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gerbertoilets.com>, registered with Power Brand Center Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2011; the National Arbitration Forum received payment on June 1, 2011.
On June 2, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <gerbertoilets.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@gerbertoilets.com. Also on June 3, 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 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the GERBER trademark, which it uses in connection with the marketing of its plumbing products.
Complainant holds a trademark registration for the GERBER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,197,796, issued June 15, 1982).
Respondent registered the <gerbertoilets.com> domain name on June 21, 2010.
The disputed domain name resolves to a page of links to the webs sites of third-parties whose products are in competition with the business of Complainant.
Respondent has been a respondent in multiple UDRP proceedings resulting in the transfer of domain names to various complainants.
Respondent’s <gerbertoilets.com> domain name is confusingly similar to Complainant’s GERBER trademark.
Respondent is not commonly known by the disputed domain name, and Respondent is not affiliated with Complainant and does not have authorization to use its GERBER trademark.
Respondent does not have any rights to or legitimate interests in the domain name <gerbertoilets.com>.
Respondent registered and uses the disputed <gerbertoilets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the GERBER trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a complainant’s national trademark registration established its rights in a mark under Policy ¶ 4(a)(i)). This is true without regard to whether Complainant’s mark registration was achieved in a country other than that in which Respondent resides or operates, it being sufficient that Complainant can establish rights in its mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in some jurisdiction).
The disputed <gerbertoilets.com> domain name is confusingly similar to Complainant’s GERBER trademark. In forming the domain name, Respondent has merely added to the GERBER mark the generic top-level domain (“gTLD”) “.com” and the descriptive term “toilets,” which refers to an aspect of Complainant’s business. These alterations of the mark do not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See 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.
To the same effect, see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Similarly, the addition to Complainant’s mark of a term which is descriptive of its business or products does not distinguish the resulting domain name from the mark under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel therefore finds that the disputed <gerbertoilets.com> domain name is confusingly similar to Complainant’s GERBER trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights to and legitimate interests in the disputed <gerbertoilets.com> domain name. Once a complainant has made out a prima facie case in support of its allegations in this regard, the burden shifts to a respondent to prove that it has such rights or 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 a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
Complainant has made out a prima facie case under this head of the Policy, while Respondent, for its part, has failed to submit a response to the Complaint. We may therefore presume that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000):
By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.
See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondent’s failure to respond to a complaint filed under the Policy can be construed as an admission that it has no legitimate interest in a disputed domain name).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested <gerbertoilets.com> domain name which are cognizable under the Policy.
In this connection, we begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed <gerbertoilets.com> domain name, and that Respondent is not affiliated with Complainant and does not have authorization to use its GERBER trademark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Pantages Inc / Pantages,” which does not resemble the contested domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <gerbertoilets.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names, and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), because the relevant WHOIS information listed the registrant of the disputed domain names only as Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute).
We also note that Complainant alleges, without objection from Respondent, that Respondent’s <gerbertoilets.com> domain name resolves to a page which displays links to the websites of Complainant’s commercial competitors. Presumably Respondent receives pay-per-click fees from the visits of Internet users to the websites resolving from these links. Because the domain name is used in this manner, it is clear that Respondent lacks rights to and legitimate interests in the contested domain name either as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that a respondent’s use of a contested domain name to operate a pay-per-click search engine, in competition with the business of a complainant, was not a bona fide offering of goods or services).
The Panel thus finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors’ websites is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), and that the requirements of Policy ¶ 4(a)(ii) have therefore been met.
Respondent has a history of bad faith registration and use of domain names. See, for example, Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Pantages Inc / Pantages, FA 1380661 (Nat. Arb. Forum Apr. 23, 2011) (ordering domain name transferred); see also Bayer Aktiengesellschaft and Bayer Healthcare LLC v. PrivacyProtect.org, Domain Admin / Pantages Inc, Pantages, WIPO Case No. D2011-0201 (Apr. 3, 2011) (ordering domain transferred). These UDRP proceedings evidence a pattern of cybersquatting, and thus stand as evidence that the instant domain name was itself registered and is being used in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of a domain name, pursuant to Policy ¶ 4(b)(ii), where a respondent had been subject to prior UDRP proceedings in which panels ordered transfers of domain names containing the trademarks of various complainants).
In addition, the disputed <gerbertoilets.com> domain name, which is confusingly similar to Complainant’s GERBER trademark, is being used by Respondent to divert Internet users seeking Complainant’s website, thus disrupting Complainant’s business. This is evidence that Respondent has registered and uses the domain in bad faith within the meaning of Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent had used the domain to promote auction sites competing with the business of a complainant); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from the website of a complainant to a competitor’s website in bad faith under Policy ¶ 4(b)(iii)).
Finally, bad faith registration and use of the contested domain is demonstrated by its use for commercial gain. The unpermitted use of a domain name which is confusingly similar to the mark of another for commercial gain demonstrates bad faith registration and use on the part of Respondent. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website offering competing travel services came within Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
We likewise conclude that Respondent’s registration and use of the domain name <gerbertoilets.com> is done in bad faith under Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <gerbertoilets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 11, 2011
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