NIC Industries, Inc. v. Abadaba S.A.
Claim Number: FA1206001448503
Complainant is NIC Industries, Inc. (“Complainant”), represented by Thaddeus G. Pauck of Brophy Schmor Brophy, Paradis Maddox & Weaver, LLP, Oregon, USA. Respondent is Abadaba S.A. (“Respondent”), represented by Stevan Lieberman of Greenberg & Lieberman, LLC, Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cerakote.com>, registered with Fabulous.com Pty Ltd.
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.
Flip Jan Clause Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 13, 2012.
On June 13, 2012, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <cerakote.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 June 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@cerakote.com. Also on June 15, 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 July 3, 2012.
Complainant submitted an Additional Submission on July 10, 2012.
On July 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Jan Claude Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges:
· Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CERAKOTE mark (Reg. No. 4,068,382).
· Complainant began using the CERAKOTE mark on July 1, 2003 in connection with Complainant’s production and sale of ceramic based sealants and coatings.
· Complainant first attempted to register the CERAKOTE mark with the USPTO in January of 2004.
· Complainant’s CERAKOTE trademark is widely known and recognized throughout the industry and the world because Complainant spent significant sums in marketing its products and developing name recognition.
· Respondent’s <cerakote.com> domain name is identical to Complainant’s CERAKOTE mark.
· Respondent is not commonly known by the <cerakote.com> domain name.
· The disputed domain name does not resolve to an active website.
· Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to Complainant for more than Respondent’s out-of-pocket costs. Respondent offered to sell the disputed domain name for $8,000.00.
· Respondent registered the <cerakote.com> domain name in order to prevent Complainant from using the disputed domain name, and there is a pattern of Respondent’s bad faith registration.
B. Respondent alleges:
· Complainant failed to submit evidence of Complainant’s trademark registration with the USPTO.
· Complainant abandoned its first trademark registration application with the USPTO in 2005.
· Complainant did not provide evidence that the CERAKOTE mark was used in commerce in Panama, where Respondent operates.
· Complainant’s CERAKOTE mark is descriptive.
· Respondent registered the <cerakote.com> domain name on August 2, 2006.
· The <cerakote.com> domain name has always resolved to a website that features pay-per-click hyperlinks, which is a bona fide offering of goods or services.
· Respondent did not register the disputed domain name with the intention of selling the domain name to Complainant, Complainant did not provide evidence that Respondent offered to sell the disputed domain name, and, even if Respondent did offer to sell the domain name, Complainant first approached Respondent.
· Respondent did not have actual knowledge of Complainant’s rights in the CERAKOTE mark.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CERAKOTE mark (Reg. No. 4,068,382). Respondent registered the domain name with as primary purpose the use for a pay-per-click landing page. Respondent contests the offer for sale for $8,000.00 but at the same time recognizes his willingness to sell the domain name.
Respondent has not submitted an Additional Submission.
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:
(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 owns a trademark registration with the USPTO for its CERAKOTE mark (Reg. No. 4,068,382). Complainant has provided evidence of this trademark registration.
The Panel finds that Complainant already owned common law rights in the CERAKOTE mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <cerakote.com> domain name is identical to Complainant’s CERAKOTE mark. The Panel notes that the disputed domain name combines Complainant’s CERAKOTE mark with the generic top-level domain (“gTLD”) “.com.” Despite this minor change, the Panel finds that the <cerakote.com> domain name remains identical to Complainant’s CERAKOTE mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <cerakote.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical 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 (which have been established by Complainant and recognized above by the Panel) 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)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent is not commonly known by the <cerakote.com> domain name. The Panel finds that the WHOIS information lists “Abadaba S.A.” as the registrant of the disputed domain name. In light of the WHOIS information, the Panel concludes that Respondent is not commonly known by the <cerakote.com> domain name under Policy ¶ 4(c)(ii). See 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).
The disputed domain name does not resolve to an active website. The Panel finds that Respondent is not making an active use of the disputed domain name and finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <cerakote.com> domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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 argues that Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to Complainant for more than Respondent’s out-of-pocket costs. Complainant contends that Respondent offered to sell the <cerakote.com> domain name for $8,000.00. The Panel finds that Respondent registered and uses the <cerakote.com> domain name in bad faith under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant further argues that Respondent registered the <cerakote.com> domain name in order to prevent Complainant from using the disputed domain name. The Panel determines that Respondent registered and uses the <cerakote.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).
The Panel finds that Respondent is not making an active use of the <cerakote.com> domain name. The Panel concludes that Respondent registered and uses the <cerakote.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cerakote.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Jan Claude Petillion, Panelist
Dated: July 17, 2012
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