National Agency for Food and Drug Administration and Control v. Mike Call / Lady Luck, LLC
Claim Number: FA1210001465692
Complainant is National Agency for Food and Drug Administration and Control (“Complainant”), represented by James Mbachiantim, Nigeria. Respondent is Mike Call / Lady Luck, LLC (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nafdacnigeria.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2012; the National Arbitration Forum received payment on October 4, 2012.
On October 8, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <nafdacnigeria.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) 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 October 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@nafdacnigeria.org. Also on October 16, 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 November 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <nafdacnigeria.org> domain name, the domain name at issue, is confusingly similar to Complainant’s NAFDAC mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the acronym “NAFDAC” in relation to its National Agency for Food and Drug Administration and Control. NAFDAC was created by the Nigerian government to regulate food and drug issues in the country.
Respondent abuses and illegally uses the NAFDAC name for its personal gain, and uses Complainant’s content on Respondent’s own website. Respondent registered the <nafdacnigeria.org> domain name on July 30, 2002, when he created the website on behalf of Complainant and ultimately kept the domain name for himself. The <nafdacnigeria.org> domain name is identical to Complainant’s website at <nafdac.gov.ng>. Respondent does not have rights or legitimate interests in the disputed domain name because he is no longer associated with Complainant. Respondent “monetizes” the traffic at the website, and displays “old and outdated” information regarding Complainant’s business. Respondent did not submit a Response in this proceeding.
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 does not assert trademark rights to the National Agency for Food and Drug Administration and Control, or the NAFDAC acronym, through trademark registration or common law rights. However, the Panel determines that Policy ¶ 4(a)(i) allows a finding for Complainant’s common law rights in a mark absent a trademark registration with a government trademark authority. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant’s organization is the Nigerian equivalent of the United States Food and Drug Administration, and the domain name belonged to Complainant in the past. Complainant’s unchallenged claim that it has status as a Nigerian government agency responsible for food and drug issues gives Complainant rights to the NAFDAC mark. Accordingly, the Panel concludes that Complainant sufficiently demonstrates rights in its NAFDAC mark under Policy ¶ 4(a)(i).
The Panel notes that the <nafdacnigeria.org> domain name uses the entire NAFDAC mark and includes the geographic descriptor “nigeria,” as well as the generic top-level domain (“gTLD”) “.org. Adding a geographic identifier and a gTLD to the NASDAC mark does not alleviate the confusing similarity of the <nafdacnigeria.org> domain name under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Bausch & Lomb Inc. v. Hatoyama/www.Securenames.org, FA 1340435 (Nat. Arb. Forum Sept. 23, 2010) (stating that by affixing the gTLD “.org” to the complainant’s mark does not distinguish a domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 does not allege that Respondent is not commonly known by the <nafdacnigeria.org> domain name; however, the Panel notes that the WHOIS information associated with the disputed domain name identifies “Mike Call” as the registrant. The name “Mike Call” does not demonstrate that Respondent is commonly known by the <nafdacnigeria.org> domain name and therefore the Panel finds that Respondent lacks rights or legitimate interests in the domain name pursuant to 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).
Respondent makes an illegitimate commercial use of the disputed domain name because he monetizes the traffic visiting his website, and the information is outdated and misleading. Complainant provides evidence of Respondent’s past use of the disputed domain name, which shows a screenshot of the resolving website, which contains Complainant’s full name and slogan and information that purports to belong to Complainant’s website. Respondent’s unauthorized use of Complainant’s NAFDAC mark at the resolving website is not used to make 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). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Respondent’s current use of the <nafdacnigeria.org> domain name is a slight variation of its previous use, in that Respondent merely changed the header on the resolving website to read, “An unofficial Fan site” of the NAFDAC Nigeria organization. Complainant argues that no such body exists. Further, the current use of the resolving website also includes advertisements from which Respondent earns monthly income. The Panel finds that using the resolving webpage to suggest affiliation with Complainant and to host advertisements does not constitute a bona fide offering of goods or services consistent with Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use consistent with Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent currently monetizes the Internet traffic that visits its website with advertisements and therefore uses the mark for his own personal gain. Complainant’s registration and use in bad faith under Policy ¶ 4(b)(iv) is shown by its use of the <nafdacnigeria.org> domain name to make a profit by hosting advertisements at the resolving website, and diverting Internet traffic to its website by using a confusingly similar domain name to Complainant’s mark. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Respondent’s previous use of the <nafdacnigeria.org> domain name is deceptive and confuses Internet users with old and outdated information about Complainant. The panel in Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001), held that the respondent’s use of the disputed domain name to misrepresent itself as the complainant and display misleading information demonstrated bad faith registration and use. The Panel concludes that Respondent registered and used the <nafdacnigeria.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) when it used the disputed domain name to mislead the public with unauthorized information and pass itself off as Complainant.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nafdacnigeria.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 30, 2012
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