Andis Company v. Noori Net
Claim Number: FA1107001400968
Complainant is Andis Company (“Complainant”), represented by Lori S. Meddings of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Noori net (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andis.net>, registered with Korea Information Certificate Authority Inc d/b/a DomainCA.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2011; the National Arbitration Forum received payment on August 2, 2011. The Complaint was submitted in both Korean and English.
On July 31, 2011, Korea Information Certificate Authority Inc d/b/a DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <andis.net> domain name is registered with Korea Information Certificate Authority Inc d/b/a DomainCA.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority Inc d/b/a DomainCA.com has verified that Respondent is bound by the Korea Information Certificate Authority Inc d/b/a DomainCA.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 August 8, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of August 29, 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@andis.net. Also on August 8, 2011, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean 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 <andis.net> domain name is identical to Complainant’s ANDIS mark.
2. Respondent does not have any rights or legitimate interests in the <andis.net> domain name.
3. Respondent registered and used the <andis.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andis Company, has used the ANDIS mark in connection with hair clippers and trimmers since 1955. Complainant provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,215,675 registered November 9, 1982). Complainant also alleges that it holds a trademark registration with the Korean Intellectual Property Office (“KIPO”) but does not provide evidence of this trademark registration.
Respondent, Noori Net, registered the <andis.net> domain name on November 4, 2004. The disputed domain name resolves to a commercial website that features hyperlinks to Complainant’s competitors in the hair clipper and trimmer business.
Respondent has been a respondent in previous UDRP proceedings, in which domain names have been transferred to the respective complainants. See Microsoft Corp. v. Noori net, FA 1343632 (Nat. Arb. Forum Oct. 12, 2010); see also Google Inc. v. Noori net, FA 1311521 (Nat. Arb. Forum Apr. 29, 2010); see also Daimler AG v. Noori net, FA 1323972 (Nat. Arb. Forum June 23, 2010); see also Herbalife Int’l of America, Inc. v. Noori net, FA 1372476 (Nat. Arb. Forum Mar. 23, 2011).
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 asserts that it has established rights in its ANDIS mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,215,675 registered November 9, 1982) and KIPO. As Complainant does not present evidence of its KIPO trademark registrations, the Panel will use Complainant’s USPTO trademark registration. In UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), and Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007), the panels held that a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Respondent resides in Korea, but previous panels, in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), have held that a complainant is not required to provide evidence of a trademark registration in a country where respondent resides or operates. In accordance with this precedent, the Panel holds that Complainant has established rights in its ANDIS mark for the purpose of Policy ¶ 4(a)(i).
Complainant contends that the <andis.net> domain name is identical to Complainant’s ANDIS mark, as Respondent simply combines Complainant’s mark with the generic top-level domain (“gTLD”) “.net.” In Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001), and Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), the panels concluded that the addition of the gTLD “.net” did not distinguish a disputed domain name. Therefore, the Panel finds that Respondent’s <andis.net> domain name is identical to Complainant’s ANDIS mark pursuant to 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 <andis.net> domain name. 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 <andis.net> domain name. Complainant asserts that Respondent is not licensed or authorized to use Complainant’s ANDIS mark and that the WHOIS information, which lists the domain name registrant as “Noori Net,” is not similar to Respondent’s <andis.net> domain name. Respondent has failed to contradict any of these arguments. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels found that a respondent is not commonly known by a disputed domain name if the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s <andis.net> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the hair clipper and trimmer business. Complainant contends that Respondent commercially benefits from these hyperlinks through the receipt of pay-per-click fees. Complainant provides a screen shot of the resolving website in support of its allegations. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panels determined that the use of a disputed domain name to resolve to a website that contains hyperlinks to a complainant’s competitors 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 in accordance with the holdings of past panels and determines that Respondent lacks rights and legitimate interests in the <andis.net> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that the website resolving from Respondent’s <andis.net> domain name offers the disputed domain name for sale and provides a link where Internet users may submit a proposed price. In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), and Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the panels concluded that a general offer to sell is evidence that a respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Thus, the Complainant determines that Respondent’s offer to sell the <andis.net> domain name is further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
According to Complainant, Respondent is making a general offer to sell the <andis.net> domain name on the resolving website. Complainant’s screen shots show a hyperlinks stating, “BUY THIS DOMAIN.” In CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panels concluded that a respondent registered and used a disputed domain name in bad faith if it offered to sell the disputed domain name to the general public. This Panel agrees with the panels in CBS Broad. Inc. and Bank of Am. Corp. and holds that Respondent’s registration and use of the disputed domain name is in bad faith under Policy ¶ 4(b)(i).
As noted in this Panel’s findings, Respondent has been a respondent in previous UDRP proceedings, in which the domain names have been transferred to the respective complainants. See Microsoft Corp. v. Noori net, FA 1343632 (Nat. Arb. Forum Oct. 12, 2010); see also Google Inc. v. Noori net, FA 1311521 (Nat. Arb. Forum Apr. 29, 2010); see also Daimler AG v. Noori net, FA 1323972 (Nat. Arb. Forum June 23, 2010); see also Herbalife Int’l of America, Inc. v. Noori net, FA 1372476 (Nat. Arb. Forum Mar. 23, 2011). In Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005), and Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004), the panels held that prior adverse UDRP proceedings are evidence of bad faith registration and use under Policy ¶ 4(b)(ii). With evidence of Respondent’s previous UDRP proceedings, this Panel finds that Respondent registered and uses the <andis.net> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
While Complainant does not argue bad faith registration and use under Policy ¶ 4(b)(iii), Complainant does present evidence that Respondent uses the <andis.net> domain name to resolve to a website that features hyperlinks to Complainant’s competitors. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels concluded that a respondent’s use of a disputed domain name to host competing hyperlinks disrupts a complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). The Panel determines that Respondent’s registration and use of the <andis.net> domain name disrupts Complainant’s hair clipper and trimmer business and holds that Respondent registered and uses the <andis.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also does not make any allegations under Policy ¶ 4(b)(iv). However, Complainant does contend that Respondent commercially benefits from the aforementioned hyperlinks by receiving click-through fees. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panels found that a website containing hyperlinks to a complainant’s competitors was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel finds accordingly in this case.
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ANDIS mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, such as in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights, as the Panel did in Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006). As Respondent registered an identical disputed domain name for the purpose of hosting competing hyperlinks, the Panel concludes that Respondent had actual knowledge of Complainant’s mark, which is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
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.
Accordingly, it is Ordered that the <andis.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 13, 2011
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