Norgren, Inc. v. Andre Schneider / DomCollect AG
Claim Number: FA1303001491917
Complainant is Norgren, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA. Respondent is Andre Schneider / DomCollect AG (“Respondent”), Zug, Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, <norgren-shop.org>, registered with 1&1 Internet AG.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2013; the National Arbitration Forum received payment on March 27, 2013.
On April 2, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, <norgren-shop.org>, domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with Icon’s Uniform Domain Name Dispute Resolution Policy (the“Policy”).
On April 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@norgren-shop.com, postmaster@norgren-shop.info, postmaster@norgren-shop.net, and postmaster@norgren-shop.org. Also on April 3, 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 May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
Complainant made the following contentions.
1.The disputed domain names are confusingly similar to a mark in which Complainant has rights.
i. Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NORGREN mark (e.g., Reg. No. 950,639 registered Jan. 16, 1973).
ii. Respondent registered the <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, and <norgren-shop.org> domain names on May 7, 2012.
iii. The addition of a generic top-level domains (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison.
iv. The disputed domain names contain Complainant’s mark in its entirety, with only the addition of the generic word “shop.”
2.Respondent has no rights or legitimate interests in the disputed domain names.
v. There is no evidence that Respondent has ever been commonly known by the disputed domain names.
vi. Respondent is using the disputed domain names to redirect unsuspecting internet users to a website featuring generic links to third party websites, some of which directly compete with Complainant’s services. This is not a bona fide offering or a legitimate use.
3.Respondent registered and is using the disputed domain names in bad faith.
vii. Respondent is using the disputed domain names in connection with “click through” websites, where it likely receives revenue when misdirected Internet users click on the displayed links. This is bad faith under Policy ¶ 4(b)(iv).
viii. Respondent’s pay-per-click links promote products that compete with Complainant, which is disruptive of Complainant’s business and evidence of bad faith under Policy ¶ 4(b)(iii).
ix. Respondent was aware of Complainant’s rights in the NORGREN mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the motion and fluid flow control industry and related fields.
2. Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NORGREN mark (e.g., Reg. No. 950,639 registered Jan. 16, 1973).
3. Respondent registered the <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, and <norgren-shop.org> domain names on May 7, 2012. They resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it does and claims rights in the NORGREN trademark based on its registrations of the mark (e.g., Reg. No. 950,639 registered Jan. 16, 1973) with the USPTO for its motion and fluid control products. See Complainant Annex B. The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Further, the Panel notes that past panels have found that a complainant need not register its mark in the country of a respondent to demonstrate rights in the mark. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights under ¶ 4(a)(i) in the NORGREN mark.
The second question that arises is whether the disputed domain names are identical or confusingly similar to the NORGREN mark. Complainant claims that the <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, and <norgren-shop.org> domain names are confusingly similar to its NORGREN mark. The Panel finds that the addition of a gTLD such as “.com,” “.info,” “.net,” or “.org” is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant notes that the disputed domain names each contain Complainant’s NORGREN mark in its entirety, with only the addition of the generic word “shop” as well as a hyphen. The Panel notes that past panels have found these additions insufficient to distinguish a disputed domain name from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Therefore, the Panel finds that the <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, and <norgren-shop.org> domain names are confusingly similar to Complainant’s NORGREN mark for the purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NORGREN trademark and to use it in its domain names, adding only the generic word “ shop”, thus giving the false impression that the domain names are official domain names of Complainant dealing with a shop where Complainant’s goods may be purchased and that it will lead to an official website of Complainant dealing with the same subject;
(b) Respondent has then used the domain names to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information identifies “Andre Schneider / DomCollect AG” as the registrant of all four disputed domain names. Complainant also notes that Respondent is not a licensee of Complainant. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii);
(e) Complainant also notes that Respondent is using the disputed domain names to redirect users to web pages featuring generic links to third-party websites, some of which compete with Complainant’s business. See Complainant Annex E. Complainant claims that this demonstrates that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). Because past panels have found that the display of competing hyperlinks on a resolving website does not demonstrate a bona fide offering or a legitimate noncommercial or fair use of a disputed domain name, this Panel also finds that Respondent has not demonstrated rights or legitimate interests under Policy ¶¶ 4(c)(i) or 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that the disputed domain names resolve to “click through” websites, which contain links promoting products that compete with Complainant’s business (such as <neffpower.com> and <magnatrol.com>). Complainant claims this disrupts its business and is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel notes that previous panels have found the display of competing links to constitute disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant also contends that Respondent likely receives revenue when misdirected Internet users click these links and that Respondent is intentionally using domain names confusingly similar to Complainant’s NORGREN mark in order to attract users to its website. Complainant argues that this demonstrates bad faith under Policy ¶ 4(b)(iv). As the Panel agrees that Respondent is trying to profit by attracting users seeking Complainant’s website, it also finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv), as past panels have done. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the NORGREN mark. Complainant argues that Respondent's displaying of links that compete with Complainant indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name")."
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the NORGREN mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <norgren-shop.com>, <norgren-shop.info>, <norgren-shop.net>, <norgren-shop.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 3, 2013
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