FCOA, LLC v. Pham Dinh Nhut
Claim Number: FA1111001413706
Complainant is FCOA, LLC (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foremostpayonlin.com>, registered with April Sea Information Technology Corporation.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 1, 2011. The Complaint was submitted in both Vietnamese and English.
On November 4, 2011, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <foremostpayonlin.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 November 16, 2011, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of December 6, 2011 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@foremostpayonlin.com. Also on November 16, 2011, 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.
On December 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <foremostpayonlin.com> domain name is confusingly similar to Complainant’s FOREMOST mark.
2. Respondent does not have any rights or legitimate interests in the <foremostpayonlin.com> domain name.
3. Respondent registered and used the <foremostpayonlin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FCOA, LLC, offers insurance and insurance related services under its FOREMOST mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FOREMOST and related marks, including the following:
FOREMOST Reg. No. 929,339 registered February 15, 1972;
FOREMOST Reg. No. 1,403,411 registered July 29, 1986;
FOREMOST Reg. No. 1,821,706 registered February 15, 1994;
FOREMOST BASICS Reg. No. 1,896,463 registered May 30, 1995;
FOREMOST Reg. No. 1,900,833 registered June 20, 1995;
FOREMOST EXPRESS Reg. No. 1,911,781 registered August 15, 1995;
FOREMOST Reg. No. 2,154,409 registered May 5, 1998;
FOREMOST Reg. No. 2,414,933 registered December 26, 2000; &
FOREMOST PAYONLINE Reg. No. 3,668,651 registered August 18, 2009.
Respondent, Pham Dinh Nhut, registered the <foremostpayonlin.com> domain name on May 8, 2007. The disputed domain name directs Internet users to a purported informational website containing numerous sponsored advertisements.
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 owns numerous USPTO trademark registrations for the FOREMOST and related marks:
FOREMOST Reg. No. 929,339 registered February 15, 1972;
FOREMOST Reg. No. 1,403,411 registered July 29, 1986;
FOREMOST Reg. No. 1,821,706 registered February 15, 1994;
FOREMOST BASICS Reg. No. 1,896,463 registered May 30, 1995;
FOREMOST Reg. No. 1,900,833 registered June 20, 1995;
FOREMOST EXPRESS Reg. No. 1,911,781 registered August 15, 1995;
FOREMOST Reg. No. 2,154,409 registered May 5, 1998;
FOREMOST Reg. No. 2,414,933 registered December 26, 2000; &
FOREMOST PAYONLINE Reg. No. 3,668,651 registered August 18, 2009.
The Panel finds that these trademark registrations, the earliest dating back to 1972, firmly establish that Complainant has rights in the FOREMOST mark sufficient for the purposes of Policy ¶ 4(a)(I). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <foremostpayonlin.com> domain name is confusingly similar to Complainant’s FOREMOST PAYONLINE mark. The Panel finds, however, that the proper mark for the confusing similarity comparison involves Complainant’s FOREMOST mark as the FOREMOST PAYONLINE mark was not registered with the USPTO at the time Respondent registered the disputed domain name. When comparing Respondent’s <foremostpayonlin.com> domain name to Complainant’s FOREMOST mark, the Panel finds that the only differences are the additions of the generic top-level domain (“gTLD”) “.com,” the generic term “pay,” and the misspelled generic term “online.” Previous panels have held that adding generic terms, whether correct or misspelled, to Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also McNeil Nutritionals, LLC v. Prepress Consultants, Inc., FA 1043195 (Nat. Arb. Forum Sept. 11, 2007) (determining that the addition of the term “recipies,” a misspelled variation of the word “recipe,” did not distinguish the disputed domain name from the mark). Panels have also stated that the presence of a gTLD is irrelevant to the confusingly similar analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel thus concludes that Respondent’s <foremostpayonlin.com> domain name is confusingly similar to Complainant’s FOREMOST mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Towmaster, inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name according to the Policy ¶ 4(c) factors.
Complainant asserts that Respondent has no affiliation, relationship, connection, endorsement, or association with Complainant and has never received any authorization, permission, or license to use the FOREMOST mark in any way. Complainant also contends that there is no evidence in the WHOIS record, which lists the registrant as “Pham Dinh Nhut,” that suggests that Respondent is commonly known by the disputed domain name. Based on this evidence and the lack of contradictory evidence from Respondent, the Panel determines that Respondent is not commonly known by the <foremostpayonlin.com> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant alleges that Respondent’s <foremostpayonlin.com> domain name resolves to a purportedly informational website containing numerous sponsored advertisements in the form of pay-per-click links to third-party websites. Complainant argues that these sponsored advertisements often redirect consumers to the websites of Complainant’s competitors. Complainant contends that Respondent is financially compensated each time an Internet users clicks on one of the links and is redirected to another web page. The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name for this purpose is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s resolving website at the <foremostpayonlin.com> domain name displays a variety of pay-per-click sponsored advertisements, including many that resolve to the websites of Complainant’s competitors. Complainant therefore asserts that Respondent uses the disputed domain name to divert consumers to Complainant’s competition, which disrupts Complainant’s business. The Panel holds that Respondent’s actions in connection with the disputed domain name reveal bad faith registration and use according to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant does not make any specific allegations under Policy ¶ 4(b)(iv). Complainant does allege, however, that Respondent uses the disputed domain name to display various sponsored advertisements in the form of pay-per-click links with the intent of profiting from the click-through fees generated by the links. The Panel finds that Respondent’s use of the FOREMOST mark in the disputed domain name and its hosting of pay-per-click links at the resolving website indicate that Respondent registered and uses the <foremostpayonlin.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract consumers and create confusion with Complainant’s mark for Respondent’s own profit. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant also contends that the Panel should find bad faith registration under Policy ¶ 4(a)(iii) because Respondent was on constructive notice of Complainant’s rights in the FOREMOST mark due to Complainant’s USPTO trademark registrations. Past panels have held, however, that constructive notice is insufficient for a finding of bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). Nevertheless, in this proceeding, the Panel concludes that Respondent did register the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) as it had actual knowledge of Complainant’s rights in the mark. See 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 Complainant has proven 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 <foremostpayonlin.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 20, 2011
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