Orbotech Ltd. v. Above.com Domain Privacy / Host Master
Claim Number: FA1106001392102
Complainant is Orbotech Ltd. (“Complainant”), represented by Gershon Shalom-Winter of Tulchinsky Stern Marciano Cohen Levitsky & Co., Israel. Respondent is Above.com Domain Privacy / Host Master (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orbotech.org>, registered with Above.com Pty Ltd.
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 June 5, 2011; the National Arbitration Forum received payment June 5, 2011.
On June 6, 2011, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <orbotech.org> domain name is registered with Above.com Pty Ltd and that Respondent is the current registrant of the name. Above.com Pty Ltd verified that Respondent is bound by the Above.com Pty Ltd 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 June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@orbotech.org. Also on June 13, 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 July 7, 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, <orbotech.org>, is identical to Complainant’s ORBOTECH mark.
2. Respondent has no rights to or legitimate interests in the <orbotech.org> domain name.
3. Respondent registered and used the <orbotech.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Orbotech Ltd., is the owner of the ORBOTECH mark. Complainant has federal trademark registrations in numerous jurisdictions for its ORBOTECH mark, such as with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,482,856 issued August 28, 2010), Canada’s Intellectual Property Office (“CIPO”) (Reg. No. TMA 553,054 issued October 29, 2001), and the Intellectual Property Office of Singapore (“IPOS”) (Reg. No. T99/06752B issued June 30, 1999).
Respondent, Above.com Domain Privacy / Host Master, registered the <orbotech.org> domain name April 30, 2011. The disputed domain name resolves to a web page, which displays pop-up and show advertisements. Additionally, Internet users, who have visited Respondent’s webpage, have subsequently become victims of unwanted, malicious software.
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 to 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 registered the ORBOTECH mark in several jurisdictions, such as with the USPTO (Reg. No. 2,482,856 issued August 28, 2010), CIPO (Reg. No. TMA 553,054 issued October 29, 2001), and IPOS (Reg. No. T99/06752B issued June 30, 1999). Traditionally, the registration of a trademark with a federal trademark authority establishes rights in a mark for the complainant responsible for the registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The location of the complainant and respondent has no bearing on the validity of the complainant’s rights in a mark that were acquired by trademark registration. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The Panel finds that Complainant established rights in the mark contained in its entirety within the disputed domain name under a Policy ¶ 4(a)(i) analysis.
The ORBOTECH mark has been fully incorporated into Respondent’s disputed domain name. The only change that has been made to the mark is the addition of the generic top-level domain (“gTLD”) “.org.” The addition of a gTLD does not distinguish the disputed domain name from the mark it is allegedly infringing upon. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
The Panel finds that the <orbotech.org> domain name is identical to Complainant’s ORBOTECH mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant urges that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent failed to respond to the Complaint. Once a complainant has made a prima facie case to support its claims, the burden of proof shifts to the respondent to demonstrate that it does have such rights or legitimate interests in the disputed domain name. However, where a respondent does not submit a response, the panel may assume that this failure to respond is a respondent’s tacit admission of a lack of rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”).
The Panel finds that Complainant made a prima facie case. Notwithstanding, the Panel still reviews the record before making a determination as to whether Respondent has rights or legitimate interests in the disputed domain name.
The WHOIS information for a disputed domain name frequently provides panels with the information necessary to determine whether a respondent is commonly known by the domain name at issue. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used). The domain name registrant listed for the <orbotech.org> domain name is not nominally similar to the mark contained within it and the Panel finds that Respondent is not commonly known by the disputed domain name, under a Policy ¶ 4(c)(ii) analysis.
Further, the disputed domain name resolves to a webpage that immediately bombards Internet users with pop-up advertisements and additional advertisements. Domain names that are used to display pop-up advertisements are not bona fide offerings of goods or services under Policy ¶ 4(c)(i) and they are not legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services). Respondent’s use of the disputed domain name for pop-up advertisements is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Additionally, as a result of visiting the disputed domain name, some Internet users have been exposed to unwanted, malicious software. Downloading malicious software onto an Internet users’ computer demonstrates a lack of rights to and legitimate interests under Policy ¶ 4(a)(ii). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website, … [which] may annoy or harm the users in some way, … is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website is presumably intended to jeopardize the goodwill that Complainant has created in its mark and it is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to demonstrate any semblance of 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).”). The Panel finds that Respondent’s use of the disputed domain name for malicious software downloads is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 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 registered and used the disputed domain name in bad faith. It is common for disputed domain names to resolve to web pages that feature advertisements, pop-up and otherwise. Generally, respondents who host these web pages are compensated monetarily for the Internet traffic that is generated through each of these links. As a result, the domain names are often intentionally identical to or confusingly similar to trademarks that are owned by others for the purpose of increasing the Internet traffic the infringer’s own page. This intentional diversion of Internet users away from the intended destination, the complainant’s webpage, to the respondent’s webpage is evidence that supports findings of bad faith registration and use of a domain name. 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 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)). Respondent registered and uses the domain name <orbotech.org>, which is identical to Complainant’s ORBOTECH mark and a direct result of that use draws Internet users seeking Complainant to Respondent’s webpage. The Panel thus finds bad faith on the part of Respondent in relation to the registration and use of the <orbotech.org> domain name, pursuant to Policy ¶ 4(b)(iv).
Additionally, Internet users who visit the disputed domain name are subjected to malicious software downloads. Panels have found that domain names that attempt to download malicious software and other viruses onto the computers of Internet users are being used in a way that supports findings of bad faith registration and use. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name which resolves to a website to attract internet users and download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii).).
The Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii); 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 <orbotech.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 21, 2011.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page