Border States Industries, Inc. v. Poku tee 27
Claim Number: FA0903001251009
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bseweb.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 6, 2009; the National Arbitration Forum received a hard
copy of the Complaint on March 9, 2009.
On March 6, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <bseweb.com>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On March 12, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 1, 2009 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@bseweb.com by e-mail.
A timely Response was received in electronic format only prior to the
Response deadline, and not in hard copy on April 1, 2009. The Response is therefore incomplete under
ICANN Rule 5.
On April 9, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts its rights in the BSE mark, which it has registered
with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No.
2,204,119 and Reg. No. 2,204,120). Furthermore, Complainant argues that the <bseweb.com> domain name is confusingly similar to
Complainant’s BSE marks despite the additions of the generic word “web” and the
generic top-level domain “.com.”
Complainant argues that Respondent has no rights and legitimate
interests in the disputed domain name. In support of this Complainant asserts
that
§ Respondent is not commonly known by the disputed domain name;
§ the disputed domain name resolves to a website that features content from Complainant’s former website, and contains links and advertisements for unrelated third parties. According to Complainant these links and advertisements are commercial in nature, and that Respondent receives monetary gain from their use by Internet users.
§ it previously owned and operated the disputed domain name until April 2006, and that Respondent subsequently registered and began using the disputed domain name.
Complainant argues that Respondent registered and uses the disputed
domain name in bad faith. In support of this Complainant contents that
§ some of the advertisements on the resolving website pertain to its direct competitors, and that Respondent utilized Complainant’s website content as well;
§ that Respondent passed itself off as Complainant by copying elements from Complainant’s website, and that Respondent profits from the use of the third-party links;
§ Respondent was on constructive and/or actual notice of Complainant’s trademark rights;
§ that it previously owned and operated the disputed domain name until April 2006, and that Respondent subsequently registered and began using the disputed domain name.
B. Respondent
Respondent’s Response was submitted only in electronic format prior to
the Response deadline; a hard copy was not submitted, based on which the
National Arbitration Forum did not consider the Response to be in compliance
with ICANN Rule 5. Moreover, Respondent did not submit evidence and presented
only the following statement: "I bought this domain with content and I didn´t
knew that it was copywrited. I removed the content. Thanks for noticing."
FINDINGS
Complainant, Border States Industries, Inc.
is an independent electrical distributor in the
Respondent acquired the domain name after
April, 2006 and operated a website under the domain. The website contained content from Complainant’s former
website, and links and advertisements for unrelated third parties. The website
is now redirected to <kellyresearch.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary Issue:
Deficient Response
Respondent’s Response was submitted only in electronic format prior to the Response deadline; a hard copy was not received. Thus, the Response is not in compliance with ICANN Rule 5. Nevertheless, the Panel decides to accept and consider the Response on the merits. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
The Panel finds that Complainant has sufficient rights in the BSE mark
under Policy ¶ 4(a)(i). See Metro.
Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration
adequately demonstrates a complainant’s rights in a mark under Policy ¶
4(a)(i)).
The Panel agrees with Complainant and finds that the disputed domain
name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel mentions that the confusing similarity between the Complainant's mark and the domain name was not disputed by Respondent.
The Panel finds that Respondent is not commonly known by the disputed domain
name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The Panel finds that Respondent has failed to create 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), and that Respondent has sought to pass itself off as Complainant, since the disputed domain name resolved to a website that featured content from Complainant’s former website, and contained links and advertisements for unrelated third parties. See 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 emphasizes that the contents of the website has changed recently (it is now redirected to <kellyresearch.com>), but the Panel accepts Complainant's evidences in support of its arguments concerning the previous contents of the website under the disputed domain name.
The Panel points out that with
the above arguments Complainant made a prima facie case that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii), thus the burden has shifted 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). The Respondent did not make
any arguments and did not present evidences to show its rights or legitimate
interests in the disputed domain name.
The Panel finds that Respondent
engaged in bad faith registration and use under Policy ¶ 4(b)(iii), since some
of the advertisements on the resolving website pertained to third parties,
including competitors of Complainant, and Respondent utilized Complainant’s
website content as well. See David Hall
Rare Coins v.
The Panel finds that Respondent
has created a likelihood of confusion as to the source of the disputed domain
name and resolving website for commercial gain, thus the Panel finds that
Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv), since
it is highly probable that Respondent passed itself off as Complainant by
copying elements from Complainant’s website, and that Respondent profited from
the use of the third-party links. See
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bseweb.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: April 23, 2009
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