Capital Market Services LLC v. Milan Kovac
Claim Number: FA1106001393852
Complainant is Capital Market Services LLC (“Complainant”), represented by Elan Mendel, New York, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cmsforex.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2011; the National Arbitration Forum received payment on July 6, 2011. The Complaint was submitted in both English and Slovak.
On July 8, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <cmsforex.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 July 11, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of August 1, 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@cmsforex.com. Also on July 11, 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 August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cmsforex.com> domain name is identical to Complainant’s CMS FOREX mark.
2. Respondent does not have any rights or legitimate interests in the <cmsforex.com> domain name.
3. Respondent registered and used the <cmsforex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital Market Services LLC, owns the CMS FOREX mark. The mark has been registered by Complainant with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,790,219 registered May 18, 2010). Complainant has used the CMS FOREX mark in connection with its business operations since its inception. Complainant has utilized the <cmsforex.com> domain name since October 19, 2000 in connection with its operating company business operations. On March 1, 2010, Complainant found that the disputed domain name had not been renewed due to a technical auto-renewal error never intended by Complainant. The disputed domain name was registered to a third-party who, on June 20, 2011, transferred the <cmsforex.com> domain name to Respondent.
Respondent, Milan Kovac, registered the <cmsforex.com> domain name on June 20, 2011. The disputed domain name resolves to a website which redirects Internet views to websites both related and unrelated to Complainant’s business.
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 contends that it has established rights in the CMS FOREX mark. Under Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) and Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), panels have found that the registration of a mark with a federal trademark authority, such as the USPTO, is a sufficient basis upon which a complainant may demonstrate rights in a mark. Respondent has provided evidence of its USPTO registration of the CMS FOREX mark (Reg. No. 3,790,219 registered May 18, 2010) to the Panel. Respondent is listed in the WHOIS information for the <cmsforex.com> domain name as being from Slovakia. Though Complainant has provided evidence of registration in a country other than that which Respondent lives or operates in, Complainant retains rights in the mark for the purposes of Policy ¶ 4(a)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country); 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 thus finds that Complainant has established rights in the CMS FOREX mark under Policy ¶ 4(a)(i).
Complainant also contends that the <cmsforex.com> domain name is identical to its CMS FOREX mark. Respondent’s domain name is simply Complainant’s mark, without the space between words, and a generic top-level domain (“gTLD”). These changes have long been held to be irrelevant to a Policy ¶ 4(a)(i) analysis as both are changes that are required of domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Given Respondent’s failure to adequately distinguish the <cmsforex.com> domain name from Complainant’s CMS FOREX mark, the Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that, given Complainant’s demonstration of rights in the CMS FOREX mark and the identical nature of the <cmsforex.com> domain name, Policy ¶ 4(a)(i) is met.
Past panels have required a complainant to demonstrate a prima facie case that the respondent lacks rights and legitimate interests in a disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has asserted that Respondent lacks all rights and legitimate interests available to it in the <cmsforex.com> domain name. Complainant’s assertions amount to a prima facie case. The burden now shifts to Respondent to contradict these claims, but Respondent’s failure to submit a Response leaves the Panel to infer that Complainant’s allegations are correct as is demonstrated by Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) and Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004). The Panel will review the evidence for information suggesting the Respondent does have rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information for the disputed domain name lists “Milan Kovac” as the domain name registrant. Complainant contends that it has not given Respondent license to use its CMS FOREX mark in any way as Respondent is in no way affiliated with Complainant. The WHOIS information and whether a complainant permitted the respondent to use its marks have been the main avenues that prior panels look to determine if a respondent is commonly known by a disputed domain name. See 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); 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). Given that the WHOIS listing for the <cmsforex.com> domain name does not suggest that Respondent is commonly known by it and Complainant’s uncontradicted assertions that Respondent is not connected to the CMS FOREX mark in any way, the Panel finds that Respondent is not commonly known by the <cmsforex.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Past panels have determined that the use of a disputed domain name which redirects Internet users to websites both related and unrelated to a complainant does not fall within either of these protected categories. 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent’s <cmsforex.com> domain name’s resolving website does just that. Thus, the Panel determines that Respondent’s use of the disputed domain name fails to be either a bona fide offering of goods and services or a legitimate noncommercial or fair use. The Panel therefore finds that Respondent’s use of the disputed domain name does not satisfy Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant had registered and been using the disputed domain name for years prior to the unintended lapse of the domain registration. Guided by cases such as RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) and Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005), the Panel finds the fact that prior registration of a disputed domain name by a complainant, which inadvertently lapsed, demonstrates a lack of rights and legitimate interests by the respondent. As such, the Panel finds Complainant’s long-standing registration of the <cmsforex.com> domain name to be further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that, due to Complainant’s demonstration of Respondent’s lack of rights and legitimate interests in the <cmsforex.com> domain name, Policy ¶ 4(a)(ii) is met.
A respondent may not register and use a disputed domain name which disrupts the business of a complainant’s where the respondent’s domain name is identical to the complainant’s mark. Prior panels have found that the diversion of Internet users to competing websites is a disruptive use of a domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Respondent has registered and used the <cmsforex.com> domain name for just that purpose. When Internet users reach the disputed domain name, they are directed to other websites, many of which compete with the products and services offered by Complainant. The Panel therefore finds that Respondent’s registration and use of the <cmsforex.com> domain name is disruptive of Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s registration and use of the disputed domain name was prompted by the opportunity to commercially gain. Respondents often register and use identical domain names so as to confuse Internet users as to the affiliation of the domain name to the mark it is infringing upon. Respondents then frequently capitalize off of this confusion by displaying links and advertisements to websites, both competing and noncompeting with the complainant, and likely receive compensation for the Internet traffic directed through these links. Respondent has done precisely this in the instant case. The <cmsforex.com> domain name resolves to a website that redirects Internet users to a variety of other websites. The Panel presumes that this is a commercial scheme. Thus, the Panel finds that Respondent’s registration and use of the disputed domain name was done for the purpose of attracting Internet users, by creating confusion, for commercial gain pursuant to Policy ¶ 4(b)(iv). See 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).”); see also 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).
Prior to Respondent’s registration of the disputed domain name, Complainant had registered and long been using the <cmsforex.com> domain name. Panels have found, in such cases as InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) and BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000), that the registration and use of an infringing domain name that previously was registered by the complainant demonstrates bad faith on the part of the respondent. The Panel thus finds that Respondent’s registration and use of the disputed domain name was done in bad faith under Policy ¶ 4(a)(iii) as a result of it only being available to register due to an accidental error in the renewal process forcing Complainant to lose the domain name temporarily.
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name thus meeting the requirements of 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 <cmsforex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 3, 2011
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