Trellian Limited v. Center for Ban on Drugs
Claim Number: FA0807001217528
Complainant is Trellian Limited (“Complainant”), represented by David
Warmuz, of Trellian Limited,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <trelian.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August
13, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 2, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@trelian.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 <trelian.com> domain name is confusingly similar to Complainant’s TRELLIAN mark.
2. Respondent does not have any rights or legitimate interests in the <trelian.com> domain name.
3. Respondent registered and used the <trelian.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trellian Limited, is the developer and marketer
of software products including “SEO Toolkit” and “Trellian Web Page,” and owns
the <trellian.com>, <trellian.net>, and <trellian.info>
domain names. Complainant has registered
its TRELLIAN mark with the Australian Patent Office (Reg. No. 816,762 issued
December 10, 1999) and the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,733,741 issued
Respondent, Center for Ban on Drugs, registered the disputed
<trelian.com> domain name on
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."
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.”).
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 has demonstrated its trademark registration for
the TRELLIAN mark with the Australian trademark authority and the USPTO. Because the Australian trademark authority
registration predates Respondent’s disputed domain name registration, the Panel
finds that Complainant has sufficient rights in the TRELLIAN mark under Policy
¶ 4(a)(i). See
Miller Brewing
Respondent’s <trelian.com>
domain name includes Complainant’s TRELLIAN mark but omits the second “l” and
adds the generic top-level domain “.com.”
Neither alteration is sufficient in distinguishing the disputed domain
name from the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of
a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such “generic” typos do not change respondent’s
infringement on a core trademark held by the complainant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights
or legitimate interests in the <trelian.com>
domain name. Complainant must present a prima facie case to support these
allegations before the burden shifts to Respondent to prove it does have rights
or legitimate interests in the disputed domain name. The Panel finds Complainant has presented a
sufficient prima facie case to
support its assertions and Respondent has failed to respond to these
proceedings. Therefore, the Panel may
conclude Respondent does not possess rights or legitimate interests in the
disputed domain name. The Panel,
however, will examine the record and determine if Respondent possesses rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (holding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide “concrete evidence that it has rights to or
legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
There is no evidence in the record that suggests Respondent
is commonly known by the disputed domain name.
The WHOIS information lists Respondent as “Center for Ban on Drugs,” and
Respondent has failed to allege authorization to use Complainant’s mark. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a website that
features links to third-parties that may or may not relate to Complainant. Regardless, because the Panel infers
commercial gain through the receipt of click-through fees, the Panel finds that
Respondent has not created a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance
Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the
operation of a pay-per-click website at a confusingly similar domain name does
not represent a bona fide offering of
goods or services or a legitimate noncommercial or fair use, regardless of
whether or not the links resolve to competing or unrelated websites or if the
respondent is itself commercially profiting from the click-through fees); see also Disney Enters., Inc. v. Kamble,
FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges, and the Panel so finds, that Respondent
intentionally attempted to create for commercial gain a likelihood of confusion
as to the source, sponsorship, affiliation, or endorsement of the Respondent’s
website. The Panel therefore finds that
Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). 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); see also University 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 finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trelian.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: September 24, 2008
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