Hardware Resources, Inc. v. Yaseen Rehman
Claim Number: FA1201001423229
Complainant is Hardware Resources, Inc. (“Complainant”), represented by George R. Schultz, Texas, USA. Respondent is Yaseen Rehman (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardwareresources.org>, registered with eNom.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2012; the National Arbitration Forum received payment on January 6, 2012.
On January 10, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <hardwareresources.org> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.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 January 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 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@hardwareresources.org. Also on January 11, 2012, 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 February 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hardwareresources.org> domain name is confusingly similar to Complainant’s HR HARDWARE RESOURCES mark.
2. Respondent does not have any rights or legitimate interests in the <hardwareresources.org> domain name.
3. Respondent registered and used the <hardwareresources.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hardware Resources, Inc., manufactures and imports cabinet and furniture hardware. Complainant has registered its HR HARDWARE RESOURCES mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 3,385,613 registered Feb. 19, 2008;
Reg. No. 3,449,585 registered June 17, 2008;
Reg. No. 3,453,874 registered June 24, 2008; &
Reg. No. 3,453,875 registered June 24, 2008.
Respondent, Yaseen Rehman, registered the <hardwareresources.org> domain name on November 1, 2011. The disputed domain name resolves to a website containing sponsored hyperlinks to competing websites for furniture parts.
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 multiple USPTO trademark registrations for the HR HARDWARE RESOURCES mark:
Reg. No. 3,385,613 registered Feb. 19, 2008;
Reg. No. 3,449,585 registered June 17, 2008;
Reg. No. 3,453,874 registered June 24, 2008; &
Reg. No. 3,453,875 registered June 24, 2008.
Prior panels have shown that registering a mark with the USPTO sufficiently proves a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i), even if Respondent is not located in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <hardwareresources.org> domain name is confusingly similar to Complainant’s HR HARDWARE RESOURCES mark. The differences between the mark and the disputed domain name include the deletion of the initial letters “H” and “R” of Complainant’s mark, the removal of the space between the terms, and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel holds that removing letters from a mark does not differentiate a disputed domain name from the mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). The Panel also determines that neither removing the space between the terms of the mark nor adding the gTLD “.org” has any effect on preventing confusing similarity under the Policy. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel thus concludes that Respondent’s <hardwareresources.org> domain name is confusingly similar to Complainant’s HR HARDWARE RESOURCES mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case 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 interests 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.
Complainant contends that it has not licensed or otherwise authorized Respondent to use the HR HARDWARE RESOURCES mark or the disputed domain name. Complainant asserts that the WHOIS information for the <hardwareresources.org> domain name identifies the registrant as “Yaseen Rehman,” which reveals no connection between Respondent and the disputed domain name. Based on these allegations and the lack of other evidence supporting Respondent’s position, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant argues that Respondent’s <hardwareresources.org> domain name resolves to a website displaying pay-per-click links in addition to offering information about Complainant’s company and products. Complainant alleges that, at different times in the past, the resolving website has featured sponsored links to competing websites for furniture parts, unrelated generic advertisement links, and pop-up advertisements. The Panel finds, in accord with prior UDRP decisions involving similar facts, that using a confusingly similar disputed domain name to host pay-per-click links and pop-up advertisements, whether competing or not, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
Complainant also argues that Respondent attempted to sell the disputed domain name to Complainant for $40. The Panel finds that Respondent’s willingness and efforts to sell the disputed domain name to Complainant reveal a lack of rights and legitimate interests on the part of Respondent under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
Complainant contends that Respondent offered in an e-mail to sell the <hardwareresources.org> domain name to Complainant for $40. Complainant alleges that this price exceeds Respondent’s out-of-pocket costs for domain name registration and therefore indicates bad faith registration and use under Policy ¶ 4(b)(i). The Panel agrees and finds accordingly. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Complainant alleges a previous version of Respondent’s resolving website at the <hardwareresources.org> domain name contained sponsored hyperlinks to competing websites selling furniture parts. As those products overlap with Complainant’s, the advertised links facilitated competition with Complainant, thereby disrupting Complainant’s business. The Panel finds this activity demonstrates bad faith registration and use according to Policy ¶ 4(b)(iii). 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)).
Complainant contends that the various prior and current versions of Respondent’s resolving website have featured pay-per-click links, some relating to Complainant’s competitors and some being simply generic. Complainant also asserts that the resolving website has displayed information about Complainant, which creates an impression that Complainant is somehow affiliated with the resolving website. Complainant alleges that Respondent uses Complainant’s mark in the disputed domain name and displays information about Complainant’s company on the resolving website in order to create a likelihood of confusion among consumers as to Complainant’s relationship or affiliation with the disputed domain name. Complainant argues that the links featured on the resolving website are pay-per-click links that generate revenue for Respondent when clicked. The Panel may accordingly determine that Complainant asserts that Respondent uses the disputed domain name to attract consumers and create confusion for its own profit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied 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 <hardwareresources.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 14, 2012
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