Talash Infosoft Pvt Ltd v. TRUEDOMAINPRIVACY.COM a/k/a True Domain Privacy True Domain Privacy
Claim Number: FA1004001320138
Complainant is Talash Infosoft Pvt Ltd (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ahmedabad.com>. <talash.com>, <talashinfosoft.com>, <evyapar.com>, and <allindiagifts.com>, registered with Gandi SAS.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 20, 2010.
On April 21, 2010, Gandi SAS confirmed by e-mail to the National Arbitration Forum that the <ahmedabad.com>, <talash.com>, <talashinfosoft.com>, <evyapar.com>, and <allindiagifts.com> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 April 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2010 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@ahmedabad.com, postmaster@talash.com, postmaster@talashinfosoft.com, postmaster@evyapar.com, and postmaster@allindiagifts.com. Also on April 27, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
On May 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <ahmedabad.com> domain name is identical to Complainant’s AHMEDABAD.COM mark.
2. Respondent’s <talash.com> domain name is identical to Complainant’s TALASH.COM mark.
3. Respondent’s <talashinfosoft.com> domain name is confusingly similar to Complainant’s TALASHINFOSOFT.COM.
4. Respondent’s <evyapar.com> domain name is identical to Complainant’s EVYAPAR.COM.
5. Respondent’s <allindiagifts.com> domain name is identical to Complainant’s ALLINDIAGIFTS.COM mark.
6. Respondent does not have any rights or legitimate interests in the <ahmedabad.com>, <talash.com>, <talashinfosoft.com>, <evyapar.com>, and <allindiagifts.com> domain names.
7. Respondent registered and used the <ahmedabad.com>, <talash.com>, <talashinfosoft.com>, <evyapar.com>, and <allindiagifts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Talash Infosoft
Pvt Ltd, holds a trademark registration with
Respondent, TRUEDOMAINPRIVACY.COM a/k/a. True Domain Privacy True Domain Privacy, registered the disputed domain names on April 21, 2006. The disputed domain names resolve to Complainant’s websites.
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 asserts rights in its AHMEDABAD.COM and TALASH.COM marks based on its registration of the marks
with
Previous panels have held
that a complainant need not establish rights based on a registered trademark and
that a finding of the Complainant’s common law rights in its
TALASHINFOSOFT.COM, ALLINDIAGIFTS.COM and EVYAPAR.COM marks is sufficient to
establish rights under Policy ¶ 4(a)(i).
See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July
18, 2006) (finding that the complainant need not own a valid trademark
registration for the ZEE CINEMA mark in order to demonstrate its rights in the
mark under Policy ¶ 4(a)(i)); see also SeekAmerica Networks
Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do
not require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist).
Complainant asserts common
law rights in its TALASHINFOSOFT.COM, ALLINDIAGIFTS.COM and EVYAPAR.COM
marks. Complainant asserts that based on
its continuous and extensive use of the marks in connection with its online
sales of goods and services since 2003 and 2004. The Panel finds that Complainant’s continuous
and extensive use of the TALASHINFOSOFT.COM, ALLINDIAGIFTS.COM and EVYAPAR.COM
marks in connection with online retail sales is sufficient to establish common law rights in its TALASHINFOSOFT.COM,
ALLINDIAGIFTS.COM and EVYAPAR.COM marks.
See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum
Apr. 25, 2007) (finding that the complainant could establish common law rights
in its GW BAKERIES mark through consistent and continuous use of the mark,
which helped the mark become distinctive and generate “significant goodwill”); see also Goepfert v.
Complainant asserts that Respondent’s <ahmedabad.com> domain name is identical to Complainant’s AHMEDABAD.COM mark. The Panel finds that Respondent’s disputed domain name contains the entirety of Complainant’s mark and is therefore identical to Complainant’s AHMEDABAD.COM mark pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”).
Complainant asserts that Respondent’s <talash.com> domain name is identical to Complainant’s
TALASH.COM. The Panel finds that
Respondent’s disputed domain name contains the entirety of Complainant’s mark
and is therefore identical to Complainant’s TALASH.COM mark pursuant to Policy
¶ 4(a)(i). See Shirmax,
supra.
Complainant asserts that Respondent’s <talashinfosoft.com> domain name is identical to Complainant’s TALASHINFOSOFT.COM. The Panel finds that Respondent’s disputed domain name contains the entirety of Complainant’s mark and is therefore identical to Complainant’s TALASHINFOSOFT.COM mark pursuant to Policy ¶ 4(a)(i). See Shirmax, supra.
Complainant asserts that Respondent’s <allindiagifts.com> domain name is identical to Complainant’s ALLINDIAGIFTS.COM. The Panel finds that Respondent’s disputed domain name contains the entirety of Complainant’s mark and is therefore identical to Complainant’s ALLINDIAGIFTS.COM mark pursuant to Policy ¶ 4(a)(i). See Shirmax, supra.
Complainant asserts that Respondent’s <evyapar.com> domain name is identical to Complainant’s EVYAPAR.COM. The Panel finds that Respondent’s disputed domain name contains the entirety of Complainant’s mark and is therefore identical to Complainant’s EVYAPAR.COM mark pursuant to Policy ¶ 4(a)(i). See Shirmax, supra.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that based on the arguments in the Complaint, Complainant has established a prima facie case in support of its contentions and Respondent has not submitted a Response to these proceedings. 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 Policy ¶ 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) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOIS information for the disputed domain names lists
the registrant as “TRUEDOMAINPRIVACY.COM a.k.a
True Domain Privacy True Domain Privacy” which the Panel finds is not similar
to the disputed domain names. The Panel
also finds that there is no other evidence in the record to support a finding
that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain names pursuant to 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 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).
Respondent registered the disputed domain names on April 21, 2006. The disputed domain names resolve to Complainant’s websites. Although Complainant is using the disputed domain names to host its websites, the registration remains in Respondent’s name. Complainant asserts that Respondent has made an offer to sell the disputed domain names to Complainant which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Respondent’s registration of the disputed domain names for the purpose of selling them to Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also American Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration of the disputed domain names and subsequent offer to sell the disputed domain names to Complainant is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ahmedabad.com>, <talash.com>, <talashinfosoft.com>, <evyapar.com>, and <allindiagifts.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 25, 2010
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