Immihelp, LLC v. Benjamin Carmel
Claim Number: FA1201001424127
Complainant is Immihelp, LLC (“Complainant”), represented by Kelly J. Kubasta of Klemchuk Kubasta LLP, Texas, USA. Respondent is Benjamin Carmel (“Respondent”), Florida,USA, who is acting pro se.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <immihelpcenter.com>, registered with GoDaddy.com, Inc.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2012; the National Arbitration Forum received payment on January 11, 2012.
On January 12, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <immihelpcenter.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 17, 2012 an Amended Complaint was filed. On January 18, 2012, the Forum served the Amended 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@immihelpcenter.com. Also on January 18, 2012, 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.
A timely Response was received and determined to be complete on February 6, 2012. On February 27, 2012, an additional document (consisting of correspondence to and from the Respondent) was submitted and reviewed by the Panel.
On February 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
Richard DiSalle as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides those considering immigration to the United States with crucial informational resources. Complainant is a premier, comprehensive resource for providing detailed information and assistance about virtually all aspects of legal immigration to the United States. These resources include information about visitor visas, student visas, and other types of visas, including business and finance visas. It also provides information and assistance for those seeking green cards, travel insurance, and other comprehensive information for travel to the United States.
In the course of providing these services, Complainant has become known by its service mark, IMMIHELP, in which it possesses extensive and valuable rights. Complainant is the owner of marks, registered and pending with the United States Patent and Trademark Office.
Over the years, Complainant has spent significant amounts of time and resources in developing its brand and maintaining the goodwill it has built in its service marks. Complainant’s brand is readily recognizable in the industry and among consumers.
The disputed domain name <immihelpcenter.com> is confusingly similar to Complainant’s registered IMMIHELP marks because the domain name incorporates Complainant’s Marks in their entirety, merely inserting the descriptive term “center” after the mark IMMIHELP. Thus, the dominant portion of the disputed domain name is identical to the Complainant’s marks.
Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services. Complainant has not authorized Respondent to use Complainant’s Marks in a domain name. The WHOIS information on file with the Registrar identifies Benjamin Carmel, an individual, as the registrant of the domain name. Nowhere on the website or on WHOIS records does it appear that Respondent is commonly known by the <immihelpcenter.com> domain name.
Respondent registered the disputed domain name on October 15, 2011, over ten years after the first use of Complainant’s Marks and well after the registration of Complainant’s registered marks, thus evidencing Respondent's registration of the domain name in bad faith.
B. Respondent
The domain <immihelpcenter.com> is simply a description of Respondent’s planned website, as an “immigration help center.” The website is to provide answers to frequently asked questions related to work visas, green cards, and other U.S. immigration matters, and provide a free forum in which people currently involved in immigration matters can communicate with each other and provide each other with advice. Respondent certainly does not and never has intended to offer any services under the name “IMMIHELP.”
Furthermore, the shorthand word “immi” for immigration and the words “help center” are extremely common, and the mere use of such descriptive words in a domain name should not raise any issues of confusion with the complainant’s trademark.
As the son of an immigration lawyer, and as a college student with great interests in immigration law, Respondent owns and operates two other immigration-related domains: <visalottery.com> and <evisahelp.com>. Visalottery.com provides information related to the U.S. Diversity Visa Lottery program, which allows immigrants from historically underrepresented countries to immigrate to the United States if selected in the lottery program. The domain <evisahelp.com> has been used to provide information on all U.S. immigration matters, including but not limited to work visas and green cards. The domain <visalottery.com> was registered on July 1997 by Respondent’s father. Moreover, Respondent has spent hundreds of hours developing these immigration websites, without the help of any web developer.
Traffic to <immihelpcenter.com> is essentially nonexistent. A mere in-depth web analytics service, whether paid or not, by the complainant would reveal that <immihelpcenter.com> has received little or no views since its creation and thus the notion of diverting customers is completely baseless, and without any supporting evidence.
At the time in which the complainant’s representative printed out a copy of <immihelpcenter.com>, the index.php file of <aquariumfishblogs.com> was found on Respondent’s root domain <eaquariumadvice.com>. This particular domain name, <eaquariumadvice.com>, was registered because of Respondent’s great interests in fish keeping.
Respondent did not purposely intend for eaquariumadvice.com’s files to be represented when viewing <immihelpcenter.com>. These files unintentionally appeared when viewing <immihelpcenter.com> without Respondent’s knowledge, as a result of a heretofore unknown godaddy internal mechanism whereby index.php files take priority over index.html files on Linux hosting accounts.
At the time in which the complainant’s attorney printed the “aquariumfishblogs” page, the site was completely nonfunctional, and contained only dead links. Had the site been functional, the attorney would have clearly printed additional pages and links showing that a service was provided, however, the page was dead, and therefore this was impossible.
(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.
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."
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant’s information from the USPTO website appears to verify its claim that the trademarks were assigned to Complainant by the entities listed on the actual certificate and Complainant is now the owner of all of the trademark registrations submitted. The Panel finds that Complainant has established its rights in the IMMIHELP mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel finds that Respondent has not sufficiently differentiated its disputed domain name from Complainant’s IMMIHELP mark, making them confusingly similar under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). While Respondent contends that the <immihelpcenter.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Although Complainant fails to argue that Respondent is not commonly known by the disputed domain name, the Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Benjamin Carmel.” Based upon the evidence provided by the parties, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 states that the disputed domain name resolves to a website offering information and services that are unrelated to Complainant’s business, and that the services and information offered by Respondent pertain to aquariums and fish keeping. Complainant has submitted screenshots, which appear to verify its assertions. The Panel therefore concludes that Respondent is not making 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).
Complainant claims that Respondent has registered and is using the disputed domain name for its own commercial gain, and that the disputed domain name resolves to a website offering services unrelated to respondent’s business. Complainant states that Respondent is using its mark as part of its domain name to confuse Internet users into believing that Complainant and Respondent are affiliated. The Panel believes that Respondent generates revenue by diverting Internet users to its website by using Complainant’s mark in its domain name. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv), even though it claims that it was not aware of what the disputed domain name resolved to. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Respondent registered a domain name that is confusingly similar to Complainant’s Marks, and Respondent is not commonly known by the domain name. Respondent registered the disputed domain name on October 15, 2011, over ten years after the first use of Complainant’s Marks and well after the registration of Complainant’s registered marks, thus evidencing Respondent's registration of the domain name in bad faith. See Victoria's Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that "a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption" pursuant to 15 U.S.C. § 1072).
The disputed domain name currently resolves to a web site that is totally unrelated to any legitimate offering of goods or services under the name “Immihelp” or any variation thereof. Prior to instituting this proceeding, Complainant notified Respondent of Complainant's rights in Complainant’s Marks. After notification of Complainant's rights, Respondent responded with a general statement that <immihelpcenter.com> was sufficiently different from Complainant’s Marks so as to avoid any violation of Complainant’s rights. Respondent went on to say that the domain name is a description of the website, an “immigration help center.” We note that the website located at the domain name appears to be completely unrelated to an immigration help center. When Complainant responded with further correspondence regarding Respondent’s unlawful activities, Respondent failed to respond.
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <immihelpcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: March 2, 2012
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