national arbitration forum

 

DECISION

 

Proto Labs, Inc. v. Hostmonster.com / Hostmonster Inc

Claim Number: FA1201001423723

 

PARTIES

Complainant is Proto Labs, Inc. (“Complainant”), represented by Jeffrey D. Shewchuk of Shewchuk IP Services, LLC, Minnesota, USA.  Respondent is Hostmonster.com / Hostmonster Inc (“Respondent”), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chinaprotomold.com>, registered with FastDomain Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2012; the National Arbitration Forum received payment on January 10, 2012.

 

On January 12, 2012, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <chinaprotomold.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name.  FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 January 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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@chinaprotomold.com.  Also on January 18, 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.

 

No response was received from the Respondent.  Correspondence was received from Jack Leung of LivePoint Mould and Plastic Products Co. Ltd, which is not a party to this case, not related to a party to this case, and not named in the WHOIS information.

 

On February 10, 2012, 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.

 

 

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 <chinaprotomold.com> domain name is confusingly similar to Complainant’s PROTOMOLD mark.

 

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

 

3.    Respondent registered and used the <chinaprotomold.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant owns the mark PROTOMOLD, which it has been using since 1999 to offer custom injection mold products and services.  Complainant holds trademark registrations in the United States, Canada, the European Union, Mexico, and Japan.  Complainant also operates under <protomold.com> and in other countries around the world.

 

Respondent registered the <chinaprotomold.com> domain name on August 16, 2011, and uses it to resolve to a an English language website featuring “China ProtoMold,” attempting to pass itself off as being affiliated with Complainant, and displaying materials copied verbatim from Complainant’s website or other materials originating from Complainant.

 

Complainant provides evidence to show that Jack Leung of LivePoint Mold and Plastic Products Co. Ltd. (“LivePoint”) may be related to China ProtoMold, possibly through HuaHong Industrial Group Co. Ltd.  The Panel notes, however, that neither Jack Leung nor LivePoint appear in the WHOIS information, or on the offending website, and there is no evidence indicating either is related to Respondent Hostmaster.com.  This is one step removed from cases where previous panels have found a nexus between a named party and another related party for purposes of identifying the ultimate complainant or respondent.  Here, the Panel would have to first substitute one of the companies alleged to be the real party in interest, for the named party Hostmonster, and then find the nexus.  This Panel declines to do that.

 

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

 

The Panel finds that Complainant has established its rights in the PROTOMOLD mark under Policy ¶ 4(a)(i) by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,777,193 registered October 28, 2003), and with other trademark authorities around the world.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Respondent’s <chinaprotomold.com> domain name incorporates Complainant’s entire mark, merely adding the geographic identifier “china” and the generic top-level domain (“gTLD”) “.com.”   The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s PROTOMOLD mark, making them confusingly similar under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).

 

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

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).  Complainant has made a prima facie case and Respondent has failed to respond.

 

Complainant asserts that Respondent is not commonly known by the disputed domain name.  Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Hostmonster.com / Hostmonster Inc.,” which the Panel finds to bear no relationship to the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  According to Complainant, the disputed domain name resolves to the commercial homepage of a competing company, identified as “China Proto Mold,” which offers products similar to those offered by Complainant in the injection mold market.  Complainant claims the resolving website displays links and information about the competing company’s products and displays both copyrighted and trademarked information owned by Complainant.  Complainant claims that the owner of the disputed domain name and the resolving website is actually LivePoint Mold & Plastics Products Co. Inc., an injection molding company trying to pass itself off as a company named “China Proto Mold” in order to take advantage of Complainant’s PROTOMOLD mark.  This use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to the commercial website of a competitor of Complainant, which disrupts Complainant’s business, demonstrating bad faith registration and use.  Complainant states that the disputed domain name is actually owned by a competing injection mold company using Complainant’s mark in the disputed domain name to redirect Complainant’s potential customers to its website.  The Panel finds that this use demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

Respondent uses the confusingly similar domain name to generate more business for Complainant’s competitor from Internet users that think there is an affiliation between Complainant and the resolving website.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

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

 

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 <chinaprotomold.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  February 20, 2012

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page