The Neat Company v. Christopher LaHaie / Soaring Incorporated
Claim Number: FA1106001394246
Complainant is The Neat Company (“Complainant”), represented by Alexis Arena, Pennsylvania, USA. Respondent is Christopher LaHaie / Soaring Incorporated (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <neatreceipt.org>, <neatdesk.org>, <tryneat.net>, and <tryneat.org>, registered with Godaddy.Com, Inc., and <neatdesk.net>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2011; the National Arbitration Forum received payment on June 17, 2011.
On June 21, 2011, Godaddy.Com, Inc., confirmed by e-mail to the National Arbitration Forum that the <neatreceipt.org>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names are registered with Godaddy.Com, Inc., and that Respondent is the current registrant of the names. Godaddy.Com, Inc., has verified that Respondent is bound by the Godaddy.Com, Inc., 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 21, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <neatdesk.net> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@neatreceipt.org, postmaster@neatdesk.net, postmaster@neatdesk.org, postmaster@tryneat.net, and postmaster@tryneat.org. Also on June 24, 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 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neatdesk.net> and <neatdesk.org> domain names are identical to Complainant’s NEATDESK mark.
Respondent’s <neatreceipt.org>, <tryneat.net>, and <tryneat.org> domain names are confusingly similar to Complainant’s NEAT mark.
2. Respondent does not have any rights or legitimate interests in the <neatreceipt.org>, <neatdesk.net>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names.
3. Respondent registered and used the <neatreceipt.org>, <neatdesk.net>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant develops computer software and hardware products for scanning and document organization purposes. Complainant offers these products under its NEATDESK, NEAT RECEIPTS, and NEAT marks. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NEATDESK mark (Reg. No. 3,622,576 registered May 19, 2009), its NEAT RECEIPTS mark (Reg. No. 2,953,372 registered May 17, 2005), and its NEAT mark (Reg. No. 3,622,574 registered May 19, 2009).
Respondent registered the <neatreceipt.org>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names no earlier than December 28, 2010. The <neatdesk.net> domain name was registered on November 9, 2010. The <neatreceipt.org>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names resolve to websites that feature hyperlinks to Complainant’s competitors, from which Respondent receives click-through fees. The <neatdesk.net> domain name resolves to a website with pay-per-click hyperlinks.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has listed Christopher LaHaie / Soaring Incorporated as the Respondent. The Complaint erroneously reports the WHOIS listing for all of the domain names as: Christopher LaHaie a/k/a Soaring Incorporated. While 4 of the 5 domain names at issue show Christopher LaHaie as the registrant, the <neatdesk.net> shows Soaring Incorporated as the registrant. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant fails to present evidence that the <neatdesk.net> domain name is owned by the same holder that owns the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names. Therefore, the Panel dismisses the <neatdesk.net> domain name and the Panel will proceed with its UDRP analysis for the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names only, all registered by Christopher LaHaie.
Complainant provides evidence of trademark registrations with the USPTO for its NEATDESK, NEAT RECEIPTS and NEAT marks. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panels held that a trademark registration with the USPTO was sufficient to establish Policy ¶ 4(a)(i) rights in a mark. In concert with UDRP precedent, the Panel finds that Complainant has established rights in the NEATDESK, NEAT RECEIPTS and NEAT marks under Policy ¶ 4(a)(i).
Respondent’s <neatdesk.org> domain name is identical to Complainant’s NEATDESK mark because the only alteration is the addition of the generic top-level domain (“gTLD”) “.org.” In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), and SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008), past panels found that disputed domain names containing a complainant’s mark combined with a gTLD are identical to a complainant’s mark. Thus, the Panel concludes that Respondent’s <neatdesk.org> domain name is identical to Complainant’s NEATDESK mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <neatreceipt.org> domain name is confusingly similar to Complainant’s NEAT RECEIPTS mark because the only differences between the two is the addition of the gTLD “.org” and the removal of a space and the letter “s.” In Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006), and Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005), the panels found that the removal of a letter did not sufficiently distinguish a disputed domain name from a complainant’s mark. Similarly, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panels concluded that the removal of a space and the addition of a gTLD are irrelevant because spaces are impermissible in domain names and gTLDs are required. Therefore, the Panel determines that Respondent’s <neatreceipt.org> domain name is confusingly similar to Complainant’s NEAT RECEIPTS mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <tryneat.net> and <tryneat.org> domain names are confusingly similar to Complainant’s NEAT mark due to the fact that the disputed domain names combine Complainant’s mark with the generic term “try” and the gTLD “.net” or “.org.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panels held that the addition of a generic term does not adequately distinguish a disputed domain name from a mark. As noted above, the panels in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), found that the addition of gTLDs is irrelevant to a Policy ¶ 4(a)(i) analysis. Consequently, the Panel holds that Respondent’s <tryneat.net> and <tryneat.org> domain names are confusingly similar to Complainant’s NEAT mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names and that Complainant has not granted Respondent permission to use any of its marks. The WHOIS information lists “Christopher LaHaie” as the registrant of the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names. Respondent has failed to provide any affirmative evidence that it is commonly known by the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), previous panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information and the evidence in the record does not support such a finding. Similarly, the Panel concludes that Respondent is not commonly know by the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names to resolve to websites that contain hyperlinks to Complainant’s competitors, from which Respondent receives click-through fees. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), past panels found similar uses did not constitute bona fide offerings of goods or services or legitimate noncommercial or fair uses. The Panel finds that Respondent’s use of the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names is not 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names to resolve to websites containing competing hyperlinks is evidence of bad faith registration and use. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panels found that such a use constitutes a disruption of a complainant’s business, which is evidence of bad faith registration and use. Internet users intending to purchase products from Complainant may instead purchase similar products from a competitor due to Respondent’s registration and use of the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names. Therefore, the Panel finds that Respondent registered and uses the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names in bad faith under Policy ¶ 4(b)(iii).
Respondent commercially benefits from the aforementioned hyperlinks by receiving click-through fees each time an Internet user clicks on one of the hyperlinks. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panels found that using a disputed domain name to provide pay-per-click hyperlinks relating to a complainant’s competitor was evidence of bad faith registration and use under Policy ¶ 4(b)(iv). This Panel reaches a similar conclusion, and finds that Respondent is attempting to create, and profit from, confusion among Internet users as to Complainant’s affiliation with the <neatreceipt.org>, <tryneat.net>, <neatdesk.org>, and <tryneat.org> domain names, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in relation to the <neatreceipt.org>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names.
Based on the fact that the <neatdesk.net> was not found to be owned by Respondent, the Panel DISMISSES WITHOUT PREJUDICE the claim in relation to the <neatdesk.net> domain name.
Accordingly, it is Ordered that the <neatreceipt.org>, <neatdesk.org>, <tryneat.net>, and <tryneat.org> domain names be TRANSFERRED from Respondent to Complainant.
Accordingly, it is Ordered that the <neatdesk.net> domain name REMAIN WITH its registrant.
Sandra J. Franklin, Panelist
Dated: July 27, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page