national arbitration forum

 

DECISION

 

Adknowledge, Inc. v. Adknowledge Inc / Izzy Guvez

Claim Number: FA1112001419270

 

PARTIES

Complainant is Adknowledge, Inc. (“Complainant”), represented by Michael R. Geroe, California, USA.  Respondent is Adknowledge Inc / Izzy Guvez (“Respondent”), Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adknowledge-inc.com>, registered with Key-Systems GmbH.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2011; the National Arbitration Forum received payment on December 9, 2011.

 

On December 13, 2011, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <adknowledge-inc.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems 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 December 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@adknowledge-inc.com.  Also on December 14, 2011, the 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 January 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <adknowledge-inc.com> domain name is confusingly similar to Complainant’s ADKNOWLEDGE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <adknowledge-inc.com> domain name.

 

3.    Respondent registered and used the <adknowledge-inc.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Adknowledge, Inc., uses its ADKNOWLEDGE mark in connection with its marketing consultation and analysis services.  Complainant owns two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ADKNOWLEDGE mark:

 

Reg. No. 2,334,551 registered June 25, 1998 and

Reg. No. 3,166,403 registered October 31, 2006.

 

Respondent, Adknowledge Inc / Izzy Guvez, registered the <adknowledge-inc.com> domain name on December 18, 2010.  Complainant does not provide information about what type of website the disputed domain name resolves to.  Complainant does include evidence that Respondent is attempting to pass itself off as an employee of 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 owns two trademark registrations with the USPTO for the ADKNOWLEDGE mark:

Reg. No. 2,334,551 registered June 25, 1998 and

Reg. No. 3,166,403 registered October 31, 2006.

The Panel determines that Complainant’s USPTO trademark registrations are sufficient to establish rights in its ADKNOWLEDGE mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Respondent’s <adknowledge-inc.com> domain name contains Complainant’s entire ADKNOWLEDGE mark and also contains a hyphen, the generic abbreviation “inc,” and the generic top-level domain (“gTLD”) “.com.”  The Panel determines that such additions do not remove the <adknowledge-inc.com> domain name from the realm of confusing similarity under Policy ¶ 4(a)(i).  See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). 

 

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

 

Rights or Legitimate Interests

 

In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case arguing against Respondent’s rights and legitimate interests that is sufficient to shift the burden of proving rights and legitimate interests to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum  Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent declined to respond, however, and thus presented the Panel with nothing but silence in defense of its position. Without further argument from Respondent, the Panel may assume that Complainant’s allegations are true and hold that Respondent lacks rights and legitimate interests. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.

 

Respondent did not respond to this case and did not present any evidence that it is commonly known by the <adknowledge-inc.com> domain name.  In the absence of any arguments from Respondent, the Panel elects to examine the WHOIS information to determine if there are any similarities.  The WHOIS information lists “Adknowledge Inc / Izzy Guvez” as the registrant of the disputed domain name, which the Panel determines is not similar to the <adknowledge-inc.com> domain name.  Based on this evidence, the Panel concludes that Respondent is not commonly known by the <adknowledge-inc.com> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent uses the <adknowledge-inc.com> domain name to host its e-mail address that Respondent uses to pass itself off as Complainant.  Complainant presents a copy of an advertisement contract Respondent signed with a third party, Internet-Id.  In the contract, Respondent’s signature line lists its company as “Adknowledge Inc” and lists its e-mail as izzg@adknowledge-inc.com.  Complainant presents evidence that Internet-Id thought it was doing business with Complainant because it contacted Complainant about money owed from the contract.  Complainant also includes an e-mail chain between Internet-Id and Respondent that shows Respondent uses the izzg@adknowledge-inc.com e-mail address and that Respondent lists its address as:

 

            Adknowledge Corporate Office

            4600 Madison Avenue – 10th Floor

Kansas City, MO 64112.

 

This address is Complainant’s corporate office address.  Based on this evidence, the Panel determines that Respondent is attempting to pass itself off as Complainant, which is evidence that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <adknowledge-inc.com> domain name.  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

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

 

Registration and Use in Bad Faith

 

As Respondent registered and uses the <adknowledge-inc.com> domain name for the purpose of passing itself off as Complainant, the Panel infers that Respondent commercially benefits from this scheme.  In fact, the Panel determines that Respondent already benefited from the passing off attempt because Respondent failed to pay Internet-Id for its services and Internet-Id contacted Complainant to pay instead.  Thus, the Panel finds that Respondent is attempting to commercially benefit from Internet user confusion as to Complainant’s affiliation with the disputed domain name.  Therefore, the Panel holds that Respondent registered and uses the <adknowledge-inc.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Moreover, the Panel determines that Respondent’s attempt to pass itself off as Complainant is evidence in and of itself that Respondent registered and uses the <adknowledge-inc.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

The Panel finds 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 <adknowledge-inc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  January 27, 2012

 

 

 

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