Global Equipment Company Inc. v. Rasvir Mustan
Claim Number: FA1307001510756
Complainant is Global Equipment Company Inc. (“Complainant”), represented by Curt Rush of 11 Harbor Park Drive, New York, USA. Respondent is Rasvir Mustan (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalindustrialdirect.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2013; the National Arbitration Forum received payment on July 22, 2013.
On July 24, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <globalindustrialdirect.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@globalindustrialdirect.com. Also on July 24, 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.
On August 15, 2013 a response was received after the deadline to file a Response. Therefore the response was not compliant with ICANN Rule #5(a) and/or the Annex to the Supplemental Rules and was not considered by the panel.
On August 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Respondent is not commonly known by the domain name.
ii. Respondent is offering the same or similar goods as Complainant.
i. Respondent is competing with Complainant’s business.
ii. Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website and created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
iii. Respondent has registered the disputed domain name in bad faith by doing so with knowledge of Complainant’s rights in the well-known GLOBALINDUSTRIAL.COM mark and obvious similarity between GLOBALINDUSTRIAL.COM and <globalindustrialdirect.com>.
B. Respondent
Respondent failed to submit a compliant Response.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 compliant 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 alleges that it is a mail order catalog services online retail stores featuring industrial equipment, industrial supplies, storage equipment, packaging, and furniture. Complainant argues that it is the owner of a trademark registration with the USPTO for the GLOBALINDUSTRIAL.COM mark (Reg. No. 2,997,550, registered September 20, 2005). The Panel finds that because Respondent appears to reside within the United States, Complainant’s registration of the GLOBALINDUSTRIAL.COM mark with the USPTO sufficiently demonstrates rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <globalindustrialdirect.com> domain name is confusingly similar to Complainant’s trademark. Complainant contends that the <globalindustrialdirect.com> domain entirely incorporates Complainant’s GLOBALINDUSTRIAL.COM trademark combined with an additional word. The Panel notes that Respondent adds the generic term “direct” to its domain name. The Panel finds that the addition of a generic term does not negate confusing similarity pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Therefore, the Panel determines that Respondent’s <globalindustrialdirect.com> domain name is confusingly similar to Complainant’s GLOBALINDUSTRIAL.COM mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 asserts that Respondent is not commonly known by the domain name. Complainant claims that Respondent is not authorized or licensed to use the mark GLOBALINDUSTRIAL.COM. Complainant contends that there is no business contract between Complainant and Respondent and that Respondent does not own any trademark or other rights in the GLOBALINDUSTRIAL.COM mark. Accordingly, the Panel finds that Respondent is not commonly known by the <globalindustrialdirect.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant contends that Respondent is offering the same or similar goods as Complainant at the resolving website, offering to sell industrial products. Although Complainant fails to provide evidence of Respondent’s use of the disputed domain name, the Panel finds Complainant’s unchallenged allegation sufficient to find that Respondent’s use is competitive, Panel concludes that Respondent uses the <globalindustrialdirect.com> domain name to sell competing goods, and thus finds that Respondent fails to use the domain name to make a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant has proven this element.
Complainant asserts that Respondent is competing with Complainant’s business, by offering the same or similar goods as Complainant. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel determined that “Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” The Panel agrees that Respondent’s use can be found to be competitive through its sale of industrial products and the Panel holds that Respondent is disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website and created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant argues that Respondent is selling the same or similar industrial goods and products as Complainant. The Panel determines that Respondent is using the disputed domain name to attract users to its website for its own commercial gain, proving bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant asserts that Respondent has registered the disputed domain name in bad faith by doing so with knowledge of Complainant’s rights in the well-known GLOBALINDUSTRIAL.COM mark, demonstrated by the obvious similarity between the GLOBALINDUSTRIAL.COM mark and the <globalindustrialdirect.com> domain name. Complainant also contends that Respondent is using the disputed domain name to sell competing industrial products, which evidence shows Respondent’s knowledge of Complainant’s rights in the GLOBALINDUSTRIAL.COM mark. The Panel finds that, due to the fame of Complainant’s mark and Respondent’s use of the domain name, 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 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <globalindustrialdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 20, 2013
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