NCI Group, Inc. v. Pham Dinh Nhut
Claim Number: FA1309001518129
Complainant is NCI Group, Inc. (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ncibuildingsystems.com>, registered with April Sea Information Technology Corporation.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2013; the National Arbitration Forum received payment on September 5, 2013. The Complaint was received in both Vietnamese and English.
On September 6, 2013, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <ncibuildingsystems.com> domain name is registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the name. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 September 18, 2013, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of October 8, 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@ncibuildingsystems.com. Also on September 18, 2013, the Vietnamese language 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
On October 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <ncibuildingsystems.com> domain name, the domain name at issue, is confusingly similar to Complainant’s NCI and NCI BUILDING SYSTEMS mark (collectively, the "mark").
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a wholly-owned subsidiary company of NCI Building Systems, Inc., which together with its affiliated companies, is collectively referred to as “NCI.” NCI began in 1984 and has become one of the largest integrated manufacturers and marketers of metal coil coating solutions, metal components and custom metal building systems in North America. Complainant owns rights in the NCI and NCI BUILDING SYSTEMS trademarks through its registrations with the United States Patent and Trademark Office (“USPTO”) and has used it since at least as early as 1989: NCI (Reg. No. 2,079,167 registered July 15, 1997) and NCI BUILDING COMPONENTS (Reg. No. 2,028,844 registered January 7, 1997). Respondent’s <ncibuildingsystems.com> domain name is confusingly similar to Complainant’s NCI mark.
Complainant has never authorized Respondent to use its NCI or NCI BUILDING SYSTEMS marks. Respondent is not commonly known by the disputed domain name. 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 collecting commission fees from the links present on the resolving website. Respondent purposely diverts Internet users to Respondent’s website and away from Complainant’s business. Respondent was aware of Complainant and its marks when the <ncibuildingsystems.com> domain name was registered on August 12, 2004. The WHOIS information for the <ncibuildingsystems.com> domain name lists “Pham Dinh Nhut” as registrant.
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 is a wholly-owned subsidiary company of NCI Building Systems, Inc. which, together with its subsidiary and affiliated companies, including NCI Group, is collectively referred to as “NCI.” Complainant is one of the largest integrated manufacturers and marketers of metal coil coating solutions, metal components and custom metal building systems in North America. Complainant asserts its rights in the NCI (Reg. No. 2,079,167 registered July 15, 1997) and NCI BUILDING COMPONENTS (Reg. No. 2,028,844 registered January 7, 1997) marks by providing the panel with proof of its registrations with the United States Patent and Trademark Office (“USPTO”). Evidence of a registration for a given mark with a federal authority is sufficient to establish rights in a given mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Accordingly, Complainant has rights in the NCI and NCI BUILDING COMPONENTS marks under Policy ¶ 4(a)(i).
Respondent’s <ncibuildingsystems.com> domain name is confusingly similar to Complainant's NCI mark under Policy ¶ 4(a)(i). The fact that Respondent features the terms “Building Systems” and the gTLD “.com” does not negate the confusion created by Respondent’s use of the <ncibuildingsystems.com> domain name. Merely adding words and gTLDs to a complainant’s mark is insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel concludes that Respondent’s <ncibuildingsystems.com> domain name is confusingly similar to Complainant’s NCI mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <ncibuildingsystems.com> domain name because it is not commonly known by it under Policy ¶ 4(c)(ii). Complainant has never authorized Respondent to use its marks in any way. The WHOIS information for the <ncibuildingsystems.com> domain name lists “Pham Dinh Nhut” as the registrant. Previous panels have found that a Respondent is not commonly known by a disputed domain name if there is no information on the record supporting the claim that it is. 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). Accordingly, Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii).
Further, Respondent has no rights or legitimate interests in the <ncibuildingsystems.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent’s disputed domain name resolves to a website providing various links to third party sites, and Respondent is running this third-party advertisement website in order to collect referral fees in connection with an affiliate type of marketing program. The website resolving from the <ncibuildingsystems.com> domain name features links including, “Metal Building Construction,” “Metal Building Systems,” “Steel Buildings,” “Travel,” “Finance,” “Services,” “Entertainment,” and “Building Automation.” Misdirecting Internet users to a website featuring links to third parties for commercial gain is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the disputed domain name. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Accordingly, Respondent has no rights or legitimate interests in the <ncibuildingsystems.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name to intentionally divert Internet users to Respondent’s resolving website. Some of the links present on Respondent’s resolving website refer to metal work and building, which is Complainant’s line of business. This type of behavior indicates that a respondent is attempting to disrupt a complainant’s business for a respondent’s own benefit. 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).”). The Panel concludes from this that Respondent has registered and is using the <ncibuildingsystems.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Using a confusingly similar or identical domain name to intentionally create confusion as to the source, sponsorship, affiliation, or endorsement of the website indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel further concludes that Respondent has registered and is using the disputed domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv).
Complainant's trademark registrations for the NCI and NCI BUILDING COMPONENTS marks existed well before the registration of the disputed domain name on August 12, 2004, nearly 7 years after Complainant registered the well-known NCI mark in 1997. Accordingly, Respondent has constructive knowledge of Complainant's rights in the mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark and due to the use made of the website resolving to the disputed domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ncibuildingsystems.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 15, 2013
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