UniGroup, Inc. v. Mr Ibrar Qureshi
Claim Number: FA1301001481645
Complainant is UniGroup, Inc. (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Mr Ibrar Qureshi (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unigroup.com>, registered with Mesh Digital Limited.
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 January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.
On January 24, 2013, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <unigroup.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2013 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@unigroup.com. Also on January 25, 2013, 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 February 19, 2013, 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
1. Complainant uses the UNIGROUP mark in its business in the moving and transportation industry. Complainant’s business was established in 1987, and has since grown to be one of the most well-recognized brands in its industry, with a current consolidated revenue of more than $1.5 billion. Complainant’s clients include United Van Lines, Mayflower Transit, UniGroup Worldwide UTS, and Allegiant Move Management.
2. Complainant owns the <unigroupinc.com> domain name, as well as many other domain names using the UNIGROUP mark.
3. Complainant owns trademark registrations for its UNIGROUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,205,226 registered November 24, 1998).
4. Respondent registered the <unigroup.com> domain name on May 9, 2011, and the domain name is identical to Complainant’s UNIGROUP mark.
5. Respondent originally used the domain name as a parking site that advertised the domain name for sale, and later used the domain name to host links and advertising space for companies in competition with Complainant. Since that time, Respondent has taken down the resolving site, but still maintains ownership of the domain name.
6. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, and the domain name has no relationship to Respondent.
7. Respondent registered and uses the <unigroup.com> domain name in bad faith, as Respondent seeks to profit by associating itself with Complainant without authorization and intentionally attract Internet users to its website. Respondent altered its website to create an appearance of having a commercial connection with the moving and storage industry in order to divert traffic from Complainant’s website. Respondent further attempted to sell the domain name at a “grossly inflated cost” to any interested buyer.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the UNIGROUP mark. Respondent’s domain name is confusingly similar to Complainant’s UNIGROUP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <unigroup.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 states that its rights in the UNIGROUP mark come from its USPTO trademark registration of the mark (e.g. Reg. No. 2,205,226 registered November 24, 1998). A complainant’s trademark registration with the USPTO establishes a complainant’s rights pursuant to Policy ¶ 4(a)(i). Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005). Further, Policy ¶ 4(a)(i) does not require Complainant to register its mark in Respondent’s country of residence. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant makes the assertion that the <unigroup.com> domain name is confusingly similar to Complainant’s UNIGROUP mark, as the domain name consists only of Complainant’s UNIGROUP word mark in its entirety. The Panel notes that the domain name includes Complainant’s mark, with the addition of the generic top-level domain (“gTLD”) “.com,” and therefore finds that the <unigroup.com> domain name is identical to Complainant’s UNIGROUP mark pursuant to Policy ¶ 4(a)(i). 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.”).
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 makes the argument that Respondent is not licensed to register a domain name using the UNIGROUP mark, and the <unigroup.com> domain name bears no resemblance to any business of Respondent. The WHOIS information reveals “Mr Ibrar Qureshi” as the registrant and concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as demonstrated by the WHOIS information. 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 alleges that one of Respondent’s previous uses of the <unigroup.com> domain name was to host a parked webpage that advertised the disputed domain name for sale. The panel in Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009), held that the respondent’s offer to sell the domain name did not give rise to rights or legitimate interests. The Panel likewise finds that Respondent’s prior usage of the <unigroup.com> domain name to host a website that offered the domain name for sale is evidence that Respondent did not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Complainant argues that another of Respondent’s previous uses of the <unigroup.com> domain name was to host a website that offered visitors numerous links and advertising for entities in competition with Complainant’s business, and asserts that such use is not a legitimate enterprise. Complainant contends that Respondent’s use of the “Unigroup Worldwide” name, with a corresponding link at the top of the website, did not link to Complainant’s website; rather, the link brought the user to more competitors and parties unrelated to Complainant. The Panel determines that Respondent’s previous use of the disputed domain name to offer Internet users advertisements and links to Complainant’s competitors, was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant asserts that Respondent currently holds the <unigroup.com> domain name in its possession, but has since taken down the corresponding website. Respondent’s failure to use the <unigroup.com> domain name in connection with an active website is evidence that Respondent does not make a bona fide offering of goods or services in relation to the <unigroup.com> domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii). 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s previous use of the <unigroup.com> domain name to offer the domain name for sale to website visitors demonstrates Respondent’s bad faith registration and use. Complainant argues that Respondent hoped to sell the domain name at a “grossly inflated cost to Complainant or to another party,” and accuses Respondent of cybersquatting. The panel in World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), stated that the respondent used the disputed domain name in bad faith, as shown by its offer to sell the domain name for consideration greater than out-of-pocket registration costs. The Panel finds that Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i) is demonstrated by its prior use of the <unigroup.com> domain name to host a corresponding website offering the domain name for sale.
Complainant argues that Respondent attempted to profit by its previous use of the domain name by diverting traffic away from Complainant’s website and offering links and advertising to Complainant’s competitors and asserts that such activities are evidence of bad faith. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), stated that the respondent’s prior use of the disputed domain name provided evidence of bad faith because the resolving website included links to the complainant’s competitors, from which the respondent likely commercially benefited by receiving “click-through” fees. The Panel determines that Respondent’s registration and use of the <unigroup.com> domain name is in bad faith under Policy ¶ 4(b)(iv) is shown by its prior use of the resolving website to make a profit from the click-through revenue generated by the hyperlinks and advertisements posted at the website.
Complainant makes the contention that Respondent eventually removed the website associated with the <unigroup.com> domain name, and still holds the domain name in its possession. The Panel determines that holding a domain name without creating a resolving website constitutes failure to make an active use of the domain name, and concludes that passive holding of the domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <unigroup.com> domain name be TRANSFERRED from Respondent to Complainant
Bruce E. Meyerson, Panelist
Dated: March 4, 2013
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