national arbitration forum

 

DECISION

 

Exin Holding BV and its parent company Stichting het Nationaal Exameninstuut voor Informatica v. Carolina James

Claim Number: FA1207001452653

 

PARTIES

Complainant is Exin Holding BV and its parent company Stichting het Nationaal Exameninstuut voor Informatica (“Complainant”), represented by Eddie Powell of Fladgate LLP, London, England.  Respondent is Carolina James (“Respondent”), London, England.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <exin.us>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the Forum received a hard copy of the Complaint on July 13, 2012.

 

On July 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <exin.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On July 23, 2012, a Notification of Complaint and Commencement of Adminstrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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’s Contentions

1.    Complainant is one of the world’s leading providers of independent information management certification and accreditation.

2.    Complainant owns trademark registrations for the EXIN mark with the European Union Office for Harmonization in the Internal Market (“OHIM”) and the United States Patent and Trademark Office (“USPTO”):

OHIM        Reg. No. 487,603                 registered June 2, 1999;

USPTO    Reg. No. 3,095,826              registered May 23, 2006; &

OHIM        Reg. No. 1,112,458              registered January 27, 2012.

3.    Respondent registered the <exin.us> domain name on August 19, 2008.

4.    Respondent’s disputed domain name resolves to a website that attracts users looking for Complainant’s EXIN products but instead offers TESTKING products, products which have no affiliation or relationship with Complainant.

5.    Respondent’s <exin.us> domain name is confusingly similar to Complainant’s EXIN mark.

6.    Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

7.    Respondent is not, as an individual, business, or other organization, commonly known by the disputed domain name and does not have a license from Complainant to use the EXIN mark in any way.

8.    Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and diverting customers away from Complainant to the competing unlicensed products being offered by Respondent’s resolving website.

9.    Respondent uses the disputed domain name to intentionally attempt to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

10. Respondent’s bad faith is also supported by the fact that Respondent applied for a “.us” domain name in breach of the Nexus Requirements, as Respondent’s address is not a U.S. address and there is no evidence to suggest that Respondent had a lawful connection to the U.S.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS AND 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."

 

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 or is being used in bad faith.

 

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(f), 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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for the EXIN mark with the European Union Office for Harmonization in the Internal Market (“OHIM”) and the United States Patent and Trademark Office (“OHIM”):

OHIM              Reg. No. 000487603           registered June 2, 1999;

USPTO          Reg. No. 3,095,826              registered May 23, 2006; &

OHIM              Reg. No. 1,112,458              registered January 27, 2012.

The Panel concludes that these trademark registrations with the USPTO and OHIM are sufficient to prove that Complainant has rights in the mark pursuant to 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 UDRP ¶ 4(a)(i)).

 

Complainant asserts that Respondent’s <exin.us> domain name is identical to Complainant’s EXIN trademark as the disputed domain name incorporates in full the word EXIN. The Panel notes that the disputed domain name also attaches the country-code top-level domain (“ccTLD”) “.us.” Prior panels have determined that the addition of a ccTLD does not distinguish a disputed domain name. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). The Panel therefore concludes that Respondent’s <exin.us> domain name is identical to Complainant’s EXIN mark pursuant to Policy ¶ 4(a)(i).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel notes that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <exin.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it has no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant contends that Respondent has not, as an individual, business, or other organization, been commonly known by the disputed domain name. Complainant also alleges that Respondent does not have a license from Complainant to use the trademark in any context. Complainant provides the WHOIS information for the <exin.us> domain name, which the Panel notes identifies the registrant as “Carolina James.” The Panel determines that there is no similarity between the registrant and the disputed domain name and concludes, as a result, that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name).

 

Complainant contends that Respondent’s <exin.us> domain name resolves to a  website offering competing TESTKING products for sale. Complainant asserts, and this Panel accepts, that this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use according to Policy ¶ 4(c)(ii) and ¶ 4(c)(iv). 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.”).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

 

Complainant contends, and the Panel accepts, that Respondent’s disputed domain name and resolving website disrupts Complainant’s business by diverting potential customers seeking Complainant’s EXIN products to a website offering competing TESTKING products. Use of the disputed domain name disrupts Complainant’s business by facilitating competition.  The Panel thus finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).

Complainant also alleges, and this Panel finds, that Respondent registered and uses the <exin.us> domain name to attract and confuse Internet users seeking Complainant’s EXIN products with the goal of profiting commercially from the sale of the competing TESTKING products offered on the resolving website. This constitutes bad faith use under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under UDRP ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

Complainant also contends that Respondent’s bad faith is further demonstrated by its registration of the <exin.us> domain name in breach of the Nexus Requirements. Complainant alleges, and this Panel accepts, that Respondent’s address is not a U.S. address and that there is no evidence in the record to indicate that Respondent has a lawful connection to the U.S. in accordance with the Nexus Rules. The Panel finds this to constitute further evidence of bad faith.

Thus, Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <exin.us> domain name be TRANSFERRED from Respondent to Complainant.

 

David A Einhorn, Panelist

Dated:  August 27, 2012

 

 

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