NearMap Pty Ltd v. Nijat Hassanov
Claim Number: FA1207001453021
Complainant is NearMap Pty Ltd (“Complainant”), represented by Jim Davies of Elevation Legal, Australia. Respondent is Nijat Hassanov (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nearmaps.com>, registered with Moniker Online Services LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2012; the National Arbitration Forum received payment on August 23, 2012.
On August 22, 2012, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <nearmaps.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 August 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@nearmaps.com. Also on August 23, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant has rights in the ASSURANT mark. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) trademark registration for the ASSURANT mark (Reg. No. 2,543,367 registered February 26, 2002).
b. The <wwwmyassurantpolicy.com> domain name is confusingly similar to the ASSURANT mark.
c. Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The <wwwmyassurantpolicy.com> domain name resolves to a website where Respondent displays links to third-party websites, including websites belonging to Complainant’s competitors.
d. Respondent registered and is using the <wwwmyassurantpolicy.com> domain name in bad faith.
e. More than ten UDRP complaints have been filed against Respondent which resulted in the transfer of the domain name at issue to the respective complainant.
f. Respondent has attempted to lure Internet users to its website for financial gain by registering and using a confusingly similar domain name and displaying related content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ASSURANT mark. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wwwmyassurantpolicy.com> domain name, and that Respondent registered and uses the domain name 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:
(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.
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.”).
Complainant asserts that it has rights in ASSURANT mark used in connection with financial and insurance services. Complainant provides the Panel with evidence of its ownership of a USPTO trademark registration for the ASSURANT mark (Reg. No. 2543,367 registered February 26, 2002). The registration of a mark with a national trademark authority, regardless of the location of the parties, is evidence of having rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of 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). Therefore, the Panel finds that Complainant has rights in the ASSURANT mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wwwmyassurantpolicy.com> domain name is confusingly similar to the ASSURANT mark. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that the addition of generic or descriptive terms fails to distinguish the disputed domain name from the mark within it. Similarly, the panel in Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003), found that the addition of the generic prefix “www” to a mark does not remove a disputed domain name from the realm of confusing similarity. Finally, in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel determined that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel finds that Respondent’s addition of the generic prefix “www,” the generic term “my,” the descriptive term “policy,” and the gTLD “.com” do not differentiate the <wwwmyassurantpolicy.com> domain name from the ASSURANT mark. Thus, the Panel finds that the <wwwmyassurantpolicy.com> domain name is confusingly similar to the ASSURANT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that the NEARMAP mark is a coined term and that Complainant has not given Respondent permission to use the NEARMAP mark. The Panel notes that the WHOIS information in the record indicates that the registrant of the disputed domain name is “Nijat Hassanov.” Thus, 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).
Further, Complainant argues that Respondent’s <nearmaps.com> domain name resolves to a parked website that features many third-party links to companies that compete with Complainant’s offerings. Complainant notes that the links are found under headings such as “Satellite Photos Of My House,” “Earth Satellite Maps,” and “Street Maps,” among many others. Complainant argues that Respondent’s use of the disputed domain name is not a bona fide use of the domain name. The Panel finds 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 under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent, in Response to an e-mail from Complainant, stated that “I would consider selling if the right offer comes.” Complainant claims that it replied by offering to buy the domain name for $200 but never heard from Respondent again. Complainant contends that Respondent’s sale attempt is evidence of bad faith registration and use. Complainant notes that the offer came from a person named “Guo Hai Gui,” not the listed Respondent in this case. The Panel finds that the sale offer came from Respondent or someone acting on behalf of Respondent, and that the offer is evidence that Respondent registered the domain name primarily to sell it to Complainant or Complainant’s competitors, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). 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).
Complainant also asserts that Respondent has engaged in a bad faith pattern of registering infringing domain names as shown by seven adverse UDRP proceedings against Respondent. E.g., The Gap, Inc. v. Hassanov, FA 1342404 (Nat. Arb. Forum Sept. 28, 2010); Am. Airlines v. Hassanov, FA 1345979 (Nat. Arb. Forum Oct. 25, 2010); Am. Airlines v. Hassanov, FA 1345981 (Nat. Arb. Forum Oct. 29, 2010). The Panel agrees with Complainant and finds that Respondent’s history of prior adverse UDRP proceedings is evidence of Respondent’s bad faith in the current dispute pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant contends that Respondent registered and is using the disputed domain name primarily to disrupt Complainant’s business, which is evidence of bad faith under Policy ¶ 4(b)(iii). Respondent’s domain name resolves to a parked website featuring third-party links to Complainant’s competitors. Because the Panel finds that such use disrupts Complainant’s business, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Lastly, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of pay-per-click links is evidence that Respondent is attempting to attract Internet traffic to its website for its own commercial gain by creating confusion with Complainant’s mark. The Panel agrees and finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
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 <nearmaps.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 24, 2012
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