national arbitration forum

 

DECISION

 

j2 Global Communications, Inc. v. Tom / EISD John

Claim Number: FA1110001410654

 

PARTIES

Complainant is j2 Global Communications, Inc. (“Complainant”), represented by Leanne Larsen, California, USA.  Respondent is Tom / EISD John (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <efax.mobi>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (303), and <efax.bz>, registered with 1API GmbH.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2011; the National Arbitration Forum received payment on October 7, 2011.

 

On October 9, 2011; Oct 13, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (303) confirmed by e-mail to the National Arbitration Forum that the <efax.mobi> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (303) and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (303) has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (303) 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 October 9, 2011; Oct 13, 2011, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <efax.bz> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name.  1API GmbH has verified that Respondent is bound by the 1API GmbH 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 October 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@efax.mobi and postmaster@efax.bz.  Also on October 14, 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 November 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <efax.mobi> and <efax.bz> domain names are identical to Complainant’s EFAX mark.

 

2.    Respondent does not have any rights or legitimate interests in the <efax.mobi> and <efax.bz> domain names.

 

3.    Respondent registered and used the <efax.mobi> and <efax.bz> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, j2 Global Communications, Inc., is the owner of the EFAX mark. Complainant uses its mark in connection with electronic receipt and transmission of documents and communications. Complainant has registered its EFAX mark (Reg. No. 3,930,343 registered March 15, 2011) and related marks with the United States Patent and Trademark Office (“USPTO”). Additionally, Complainant has multiple registrations for the EFAX mark (e.g., Reg. No. 1,475,717 registered November 14, 2000) with the State Intellectual Property Office (“SIPO”) of Respondent’s own country, China.

 

Respondent, Tom / EISD John, registered the <efax.mobi> domain name on March 28, 2011. Respondent registered the <efax.bz> domain name on March 16, 2011. Each of the disputed domain names displays a general offer of sale and numerous competing sponsored listings, including one for Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the EFAX mark. Panels have found that the registration of a mark with a federal trademark authority allows a finding of the complainant’s rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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).”). Through the USPTO, Complainant has registered the EFAX mark (Reg. No. 3,930,343 registered March 15, 2011) as well as multiple related marks. According to the WHOIS record for the <efax.mobi> and <efax.bz> domain names, Respondent resides in China. Complainant has several registrations for the EFAX mark (e.g., Reg. No. 1,475,717 registered November 14, 2000) with SIPO in China. The Panel therefore finds that Complainant has rights in the EFAX mark pursuant to Policy ¶ 4(a)(I).

 

Complainant also argues that the <efax.mobi> and <efax.bz> domain names are identical to the EFAX mark. The Panel finds that the addition of a generic top-level domain (“gTLD”) or a country-code top-level domain (“ccTLD”) to a mark is irrelevant to a finding under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). Respondent adds to each to the disputed domain names either the gTLD “.mobi” or the ccTLD “.bz.” The Panel finds that the mere addition of a gTLD or ccTLD to each domain name, a singularly functional change, fails to distinguish the domains and thus that each of the disputed domain names is identical to Complainant’s EFAX mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant, the Panel finds, has presented arguments and evidence amounting to a prima facie case. The burden thus shifts to Respondent to disprove the allegations of Complainant. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one.  These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). Respondent, however, has failed to submit a Response to the Complaint. Therefore, the Panel will make a determination of rights and legitimate interests from inferences made from available information. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will therefore review the record for information suggesting that Respondent has rights or legitimate interests in the <efax.mobi> and <efax.bz> domain names.

 

Complainant argues that Respondent is not commonly known by the disputed domain names. A finding that a respondent is commonly known by a disputed domain name, from the information on the record and the domain name’s WHOIS listing, may confer rights or legitimate interests in the respondent for the domains. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS record for the  <efax.mobi> and <efax.bz> domain names both list “Tom/EISD John” as the domain name registrant. Additionally, Complainant asserts that in its communications with Respondent, Respondent went by “Alice.” The Panel finds that, given this information, Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii).

 

Complainant next asserts that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s disputed domain names each resolve to websites which display a number of competing, sponsored listings, including one to Complainant’s own website. Additionally, Complainant asserts that the disputed domain names is offered for sale. The Panel finds that the display of such listings  and the offer for sale of each domain name 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)); see also Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant next argues that Respondent’s declaration that each of the domain names is for sale which is represented on the domain names’ resolving websites as well as in communications with Respondent demonstrates Respondent’s bad faith. In cases such as George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panels found that an offer for sale is evidence that the respondent registered and used the disputed domain name in bad faith. Each of the disputed domain names’ resolving websites proclaims that the domain name is for sale. Additionally, Respondent represented to Complainant that the domain names could be purchased together in exchange for $3,000 as well as assigning a $1,500 price to the individual domains. The Panel finds that Respondent’s willingness to sell the disputed domain names, and its refusal to do so for an amount which presumably does not exceed its out-of-pocket costs, is demonstrative that Respondent registered the domains and is using them in bad faith pursuant to Policy ¶ 4(b)(i).

 

The registration and use of a disruptive domain name is evidentiary support of a finding that the respondent acted in bad faith. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The disputed domain names are identical to Complainant’s marks and resolve to websites which display sponsored listings to Complainant’s official website and to other websites which offer services similar to those which Complainant provides, including online transmission and receipt of documents. The Panel finds that the identical nature of the disputed domain names is certain to divert some of the Internet users which attempt to reach Complainant’s website. Therefore, the projected business flow to Complainant is upset. The Panel thus finds that Respondent’s registration and use of the disputed domain name was done in bad faith due to its disruptive nature under Policy ¶ 4(b)(iii).

 

Respondent’s domain names are also subject to a bad faith registration and use finding where the purpose of the operation of the domains was to confuse Internet users as to the affiliation of the disputed domain names and profit from this confusion. Panels have found that the display of links to competing websites, for which the respondent presumably receives compensation, compel the panel to find bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). Each of the <efax.mobi> and <efax.bz> domain names are identical to Complainant’s EFAX mark. As such, the Panel finds that Internet users are certain to presume that the domains are affiliated with Complainant’s business under the EFAX mark. Once arriving at the resolving websites, the display of listings which, like Complainant, offer electronic receipt and transmission of documents and communications services is sure to increase this confusion. Given the nature of the domains and the content displayed on their resolving websites, Internet users will inevitably trust that there is a connection and follow the listings. The Panel infers that Respondent must be compensated for the display of the listings. Therefore, the Panel finds that Respondent registered and is using the disputed domain names as a result of the attraction for commercial gain that they pose pursuant to Policy ¶ 4(b)(iv).

 

Lastly, 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 EFAX mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, 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.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Respondent’s previously established purpose of registering and using the disputed domain names, to divert Internet users from Complainant and to profit from this diversion, would not be served had Respondent not been aware that the schemes would be propelled by the similarity of the domain names. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii) because it did so with full knowledge of Complainant’s rights in the EFAX mark.

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <efax.mobi> and <efax.bz> domain names be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  November 16, 2011

 

 

 

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