MSI Holdings, LLC v. GBHost (Pushpendra Jaimini) / Pushpendra Jaimini
Claim Number: FA1304001495040
Complainant is MSI Holdings, LLC (“Complainant”), represented by Jonathan M. Doloff of Pergament Gilman & Cepeda LLP, New Jersey, USA. Respondent is GBHost (Pushpendra Jaimini) / Pushpendra Jaimini (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <testspex.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, they have no known any conflict in serving as Panelist in this proceeding.
Nathalie DREYFUS, Honorable Charles K. McCotter Jr. and G. Gervaise Davis III as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2013; the National Arbitration Forum received payment on April 16, 2013.
On April 19, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <testspex.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@testspex.com. Also on April 22, 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 31, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus, Honorable Charles K. McCotter Jr. and G. Gervaise Davis III 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 issues 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
In this proceeding Complainant is MSI Holdings, LLC.
Complainant owns rights in the SPEX mark under Policy ¶ 4(a)(i).
Complainant was founded in 1954 and provides sample preparation equipment and supplies for spectroscopists. Complainant’s equipment is used for research in pharmaceuticals, superconductors, polymers and genetics.
Complainant has rights in the SPEX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,312,902 registered January 8, 1985).
Furthermore, Complainant owns registrations for the SPEX mark in various foreign countries, including with India’s Office of the Controller-General of Patents, Designs and Trademarks (Reg. No. 1,425,575 registered March 1, 2006).
Additionally, Complainant owns numerous registrations internationally for its SPEX mark including;
· Office for Harmonization in the Internal Market “OHIM” (Reg. No. 9709486 registered July 12, 2011)
· France’s National Institute of Industrial Property “NIIP” (Reg. No. 1639674 registered January 18, 1991)
· Japan Patent Office “JPO” (Reg. No. 4717925 registered October 10, 2003)
Complainant’s SPEX mark has been famous, due to its use of the mark in commerce since 1954.
According to Complainant, Respondent’s <testspex.com> domain name is confusingly similar to Complainant’s SPEX mark.
· Respondent adds the word “test” to Complainant’s mark, which is a term that represents the services and products that are associated with Complainant’s SPEX mark.
· Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
· Respondent was aware of Complainant’s rights in the SPEX mark.
· Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
· Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its marks in any way.
Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
· Respondent had actual knowledge of Complainant’s rights in the SPEX mark.
· Respondent is passively holding the disputed domain name and failing to make an active use.
· Respondent is presumably financially profiting from the use of the disputed domain name.
· Respondent is disrupting complainant’s business through its use of the disputed domain name.
· Respondent is attempting to attract Internet users, for commercial gain to Respondent’s resolving website, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used 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 contends it has rights in the SPEX mark through its registrations with the USPTO (Reg. No. 1,312,902 registered January 8, 1985) and with India’s Office of the Controller-General of Patents, Designs and Trademarks (Reg. No. 1,425,575 registered March 1, 2006), among others. Previous panels have found that evidence of a registration with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Even if some Panels have found that it is irrelevant whether Complainant registered the mark in the country where a respondent operates or resides (See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence), the fact that Respondent has trademark rights in the country where Respondent operates is noteworthy.
The Panel finds that Complainant has rights in the SPEX mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <testspex.com> domain name is confusingly similar to Complainant’s SPEX mark. Complainant claims that Respondent has added the word “test” which is a generic word that represents Complainant’s goods and services associated with the SPEX mark. Complainant further claims that Respondent adds the gTLD “.com” to the disputed domain name. Complainant concludes that these variations are insufficient to differentiate the disputed domain name from previous trademark rights.
On one the hand, the Panel finds that the adjunction of a generic term such as “test” is insufficient to differentiate a disputed domain name from a given mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). A potential visitor of Complainant’s website may suffer from initial interest of confusion when he is misdirected to Respondent subject domain name.
On the other hand, the Panel finds that the addition of the generic top-level domain ‘.com’ is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”);
As a conclusion, the Panel finds that Respondent’s <testspex.com> domain name is confusingly similar to complainant’s SPEX mark under Policy ¶ 4(a)(i).
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.”).
According to Complainant, Respondent has not acquired any trademark or service mark rights in the subject domain name and is not known to have been referred to as any of “TESTPEX” or “TESTPEX.COM”.
Previous panels found that a respondent is not commonly known by a disputed domain name where there is no evidence in the record indicating that respondent was commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
According to the facts, it does not seem that Respondent has ever acquired any trademark right corresponding to the disputed domain name.
In addition, based upon the allegations made in the Complaint, the Panel believes that Complainant has not licensed or permitted Respondent to use its SPEX mark in any way.
Complainant further claims that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name.
Panel observes that, as late as March 29, 2013, the subject domain name directed users to advertisements via click-through links. At the time of filing the Complaint, the website changed. It directed towards a page ““Forbidden, You don’t have permission to access / on this server”. At the time the present decision was drafted, the domain name directed towards a pay-per-click website.
Respondent’s resolving website features advertisements through third party links acting as portals, and thereby generates revenue. Complainant contends that the advertisements present on the website resolving from Respondent’s <testspex.com> domain were related to Complainant’s field of activity. The Panel notes that some links present on Respondent’s website include “Crime Scene Investigation”, “All Grades of Chemicals,” “Buy Lab Chemicals,” “Buy Chemicals Online,” and “China Chemical” (See Annex 10). These links are more or less related to Complainant’s activity.
Previous panels have found that offering competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. 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 screenshot (Annex 12), showing Respondent’s resolving website displaying a message reading “Forbidden, You don’t have permission to access / on this server” is not a proof of legitimate interest. Indeed, previous panels have found that a “forbidden” message displayed at the resolving website amounts to passively holding a website, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Michelin N. Am., Inc. v. Tsang, FA1406699 (Nat. Arb. Forum Oct. 20, 2011) (stating that the respondent does not connect the disputed domain name with an active website, as the website displays a message stating “Forbidden, You don’t have permission to access / on this server.” The panel held such use to constitute bad faith registration and use).
The Panel finds therefore that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The burden has shifted to Respondent. However, Respondent, who is in default, has not demonstrated any right or legitimate interest in the use of the domain name.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
A) Registration in bad faith
Complainant contends that in light of the fame and notoriety of Complainant's SPEX mark, it is inconceivable that Respondent could have registered the <testspex.com> domain name without actual knowledge of Complainant's rights in the mark.
The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Therefore, the Panel finds that Respondent’s prior use of the <testspex.com> domain name indicate that Respondent engaged in registration in bad faith under Policy ¶ 4(b)(iv).
B) Use in Bad faith
Complainant claims that Respondent’s pay-per-click website diverts Internet users searching for Complainant’s goods to Respondent’s website from which Respondent commercially profits. Complainant claims that the pay-per-click links present on the website on March 29, 2013 were related to Complainant’s field of activity and disrupted its business by diverting consumers away from Complainant’s business. The Panel notices that this type of use indicates bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Complainant also asserts that the already mentioned message, “Forbidden You don’t have permission to access/ on this server” falls under bad faith pursuant to Policy ¶ 4(b)(iii). The Panel therefore finds that Respondent’s passive use also falls under bad faith use for the purposes of Policy ¶ 4(a)(iii). See Michelin N. Am., Inc. v. Tsang, FA1406699 (Nat. Arb. Forum Oct. 20, 2011) (stating that the respondent does not connect the disputed domain name with an active website, as the website displays a message stating “Forbidden You don’t have permission to access / on this server.” The panel held such use to constitute bad faith registration and use).
The Panel thus finds that Respondent’s use of the resolving website falls under bad faith registration and use under Policy ¶ 4(b)(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 <testspex.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie DREYFUS, Chair
Honorable Charles K. McCotter Jr. and G. Gervaise Davis III, Panelists
Dated: June 13th, 2013
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