Relyant, LLC v. Icm-groups
Claim Number: FA1305001499089
Complainant is Relyant, LLC (“Complainant”), represented by Jason Epstein, Tennessee, USA. Respondent is Icm-groups (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <relyantinternational.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2013; the National Arbitration Forum received payment on May 17, 2013.
On May 10, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <relyantinternational.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 May 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@relyantinternational.com. Also on May 17, 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.
A timely Response was received and determined to be complete on June 5, 2013.
On June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that it has used the RELYANT trademark for seven years and that it owns trademark rights in the word RELYANT and that the disputed domain name <relyantinternational.com> is confusingly similar to the RELYANT trademark.
Complainant maintains that Respondent has no rights or legitimate interest in <relyantinternational.com> and that Respondent is acting in bad faith, because “Respondent has hijacked the name of RELYANT and Respondent’s use of the domain name <relyantinternational.com> is being used in connection with a bona fide offering of goods and services of the same type offered by Complainant in the government contracting and commercial business sectors.” Complainant notes that Respondent has not been commonly known as <relyantinternational.com> and that Respondent owns no trademark for “Relyant” or “Relyant International.”
B. Respondent
Respondent argues that the terms that make up the <relyantinternational.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent claims that its use of the term “RELYANT” in the disputed domain name is meant only to reference Respondent’s business name, and Respondent chose the generic term “RELYANT” for its business name because of the term’s common English meaning, “believing.”
Respondent also notes that it is conducting business in the United Arab Emirates under the company name “Relyant International FZE.”
With respect to the presence of the Complainant’s logo and tagline on Respondent’s <relyantinternational.com> website, Respondent has deleted these items from the website. Respondent notes that these items were incorporated into the <relyantinternational.com> website by Respondent’s website developer. Respondent claims that it was unaware of Complainant prior to the initiation of this proceeding.
Complainant owns a U.S. registration for the stylized mark RELYANT A PROMISE DELIVERED & Design (U.S. Reg. No. 2,340,903, dated May 28, 2013). In this registration, the word “RELYANT” has the most prominence, with the less prominent tag line “A Promise Delivered” appearing under the word “RELYANT.” According to this registration, Complainant has used this mark since at least as early as April 2010.
Respondent does not contest Complainant’s assertion that it has used the “RELYANT” trademark and company name for seven years. Complainant does business under the domain name <gorelyant.com>.
Respondent registered the <relyantinternational.com> domain name on October 31, 2012.
As of the date of the Complaint, the <relyantinternational.com> website featured: 1) the name RELYANT in prominent letters, 2) Complainant’s tag line “A Promise Delivered,” and 3) the design element that is part of Complainant’s registered trademark. At least some of the text from Complainant’s <gorelyant.com> website was also reproduced on Respondent’s <relyantinternational.com> website, as of the date that the Complaint was filed.
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.
Complainant began using the RELYANT trademark and company name in 2006, and Complainant owns the registered trademark RELYANT A PROMISE DELIVERED (Reg. No. 4,340,903 registered May 28, 2013). In this registration, the word “RELYANT” is shown in large, all capital letters.
Complainant’s common law rights in “RELYANT,” as well as Complainant’s registration of the mark with the USPTO, are sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the RELYANT mark.
The Panel also concludes that Respondent’s <relyantinternational.com> domain name is confusingly similar to Complainant’s RELYANT mark. The contested domain includes the dominant portion of Complainant’s mark, the term “RELYANT,” while adding the generic term “international” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of generic terms does not defeat a claim of confusing similarity. See J. Barbour & Sons Ltd. v. Whois Privacy Services Pty Ltd., D2013-0283 (WIPO April 21, 2013) (in the domain name barbourinternational.com>, the word “international” is generic because it describes goods promoted and distributed in many countries); Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
In light of the foregoing, the Panel concludes that Respondent’s <relyantinternational.com> domain name is confusingly similar to Complainant’s RELYANT mark for the purposes of 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.”).
Complainant alleges that Respondent, as an individual, business, or any other organization, has not been commonly known by the <relyantinternational.com> domain name, and that Respondent owns no trademark rights relating to “Relyant” or “Relyant International.” Respondent’s name is listed as “Icm-groups” in the WHOIS information, which is dissimilar to the disputed domain name. In light of this and the balance of evidence presented in the record, the Panel concludes that Respondent is not commonly known by the <relyantinternational.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
According to the <relyantinternational.com> web pages, Respondent appears to be offering the same type of government contracting and small business sector services offered by Complainant. Indeed, this Panel concludes that Respondent’s website copied at least several pages of the content of Complainant’s website at <gorelyant.com>. In addition, Respondent uses the same design or logo as Complainant, which consists of the name RELYANT and the partial globe with meridian and parallel lines, as well as the same tagline as Complainant: “A Promise Delivered.” Given the similarity between Complainant’s official site and Respondent’s site housed at <relyantinternational.com>, coupled with Respondent’s use of the domain to offer services similar to those provided by Complainant under its RELYANT mark, the Panel finds that Respondent appears to be attempting to pass itself off as Complainant online. The Panel concludes that Respondent’s use of the <relyantinternational.com> domain name for the purpose of passing itself off as Complainant constitutes 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). 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Contrary to Respondent’s argument that “Relyant” is merely a common word, the Panel notes that the common English word replaces the “y” in Complainant’s mark and Respondent’s business name with the letter “i” to form the word “reliant.”
In view of the above, the Panel concludes that Respondent has not proven any rights or legitimate interest in the <relyantinternational.com> domain name.
Based upon the evidence, this Panel concludes that Respondent has registered and used the disputed domain name for the purpose of disrupting Complainant’s business by purporting to offer the same products and services as Complainant at a confusingly similar domain name. At the <relyantinternational.com> site, Respondent purports to offer government contracting and small business sector services, which are substantially similar to the services offered by Complainant at its <gorelyant.com> domain name under its RELYANT mark. The Respondent’s <relyantinternational.com> site has copied Complainant’s RELYANT trademark, logo, tagline and text from Complainant’s website. Past panels have found bad faith disruption of a complainant’s business where the respondent purports to offer competing products or services at a confusingly similar domain name. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Because Respondent’s website disrupts Complainant’s business, this Panel concludes that Respondent registered and is using the <relyantinternational.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel concludes that Respondent has intentionally attracted, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s website and domain name. Respondent has created confusion with Complainant’s mark as to the source and affiliation of Respondent’s website and of the products and services offered on Respondent’s website. In addition to operating at the confusingly similar <relyantinternational.com> domain name, Respondent has purposefully attempted to create confusion with Complainant and its mark by copying the content of Complainant’s website and employing the same design mark and tagline as Complainant. Respondent’s objective in creating this confusion is evidently to misdirect consumers searching for Complainant, and Respondent can realize a commercial gain by selling services that compete with those offered by Complainant. Previous panels have found bad faith registration and use where a respondent has intentionally created a degree of confusion with complainant in order to attract consumers to the respondent’s site, where the respondent realizes a commercial gain by offering competing products or services. See MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
In view of the above, this Panel holds that Respondent’s registration and use of the <relyantinternational.com> domain name is in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <relyantinternational.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: June 26, 2013
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