Nautica Apparel, Inc. v. Noorinet
Claim Number: FA1310001524181
Complainant is Nautica Apparel, Inc. (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey, USA. Respondent is Noorinet (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nauticashop.com>, registered with NETPIA.COM, INC.
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 October 14, 2013; the National Arbitration Forum received payment on October 14, 2013.
On October 15, 2013, NETPIA.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <nauticashop.com> domain name is registered with NETPIA.COM, INC. and that Respondent is the current registrant of the names. NETPIA.COM, INC. has verified that Respondent is bound by the NETPIA.COM, INC. 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 October 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@nauticashop.com. Also on October 15, 2013, the 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 November 7, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
a) Complainant began using the NAUTICA mark in 1983 and its use has been continuous from that time. Complainant is one of the largest and best-known apparel companies in the United States and the world, with worldwide sales exceeding $1 billion annually for the past ten years. See Complainant’s Bizzari Decl. ¶ 15. Complainant is the owner of <nautica.com>, which has been operating since December 1998 for advertising, promoting, and offering Complainant’s products connected to the NAUTICA mark.
b) Complainant has rights in the NAUTICA mark, used in connection with the sale of lifestyle clothing and apparel. Complainant owns registrations for the NAUTICA mark with the Trademark, Industrial Design and Geographic Indication Office (“TIDGIO”) of the Democratic People’s Republic of Korea (See, e.g., Reg. No. 183,120 registered November 14, 1989). Complainant also owns registrations for the NAUTICA mark with the United States Patent and Trademark Office (“USPTO”) (See, e.g., Reg. No. 1,553,539 registered August 29, 1989).
c) Respondent’s <nauticashop.com> domain name is confusingly similar to Complainant’s NAUTICA mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “shop” and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have rights or legitimate interests in the <nauticashop.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its NAUTICA mark in any way. Further, the WHOIS record for the disputed domain name lists “Noorinet” as the domain name registrant.
b. The <nauticashop.com> domain name resolves to a website with a message that offers to redirect Internet users to Complainant’s website, and the website does not appear to have any other uses. See Complainant’s Exhibit H.
e) Respondent registered and is using the <nauticashop.com> domain name in bad faith.
a. Respondent has engaged in a pattern of bad faith registrations resulting in UDRP proceedings in which Respondent’s domain names have been transferred to other complainant’s. See Complainant’s Exhibit I.
b. Respondent has knowledge of Complainant’s NAUTICA mark prior to registering the <nauticashop.com> domain name due to the ubiquitous presence, advertising, promotion and fame of the Complainant’s mark.
1. Respondent’s <nauticashop.com> domain name is confusingly similar to Complainant’s NAUTICA mark.
2. Respondent does not have any rights or legitimate interests in the <nauticashop.com> domain name.
3. Respondent registered or used the <nauticashop.com> domain name in bad faith.
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 contends it has rights in the NAUTICA mark, used in connection with the sale of lifestyle clothing and apparel. Complainant states it owns registrations for the NAUTICA mark with the TIDGIO (See, e.g., Reg. No. 183,120 registered November 14, 1989). Complainant states it also owns registrations for the NAUTICA mark with the USPTO (See, e.g., Reg. No. 1,553,539 registered August 29, 1989). Therefore, the Panel finds that Complainant has established rights in the NAUTICA mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next alleges that Respondent’s <nauticashop.com> domain name is confusingly similar to Complainant’s NAUTICA mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “shop” and the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic term does not sufficiently differentiate a disputed domain name from a trademark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <nauticashop.com> domain name is confusingly similar to Complainant’s NAUTICA mark under Policy ¶ 4(a)(i).
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.”).
Complainant claims Respondent does not have legitimate rights or interests in the <nauticashop.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its NAUTICA mark in any way. Further, Complainant notes that the WHOIS record for the disputed domain name lists “Noorinet” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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 in the record, 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). Therefore, because Respondent was not authorized by Complainant to use the NAUTICA mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <nauticashop.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <nauticashop.com> domain name resolves to a website with a message that offers to redirect Internet users to Complainant’s website, and the website does not appear to have any other uses. See Complainant’s Exhibit H. In previous cases, panels have found that failure to make an active use of a disputed domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s failure to make an active use of the <nauticashop.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered and is using the <nauticashop.com> domain name in bad faith. Complainant asserts that Respondent has engaged in a pattern of bad faith registrations resulting in UDRP proceedings in which Respondent’s domain names have been transferred to other complainant’s. See Complainant’s Exhibit I. The Panel notes that a search in the National Arbitration Forum decision database for Respondent returns five decisions, each resulting in the ordered transfer of Respondent’s domain names. See, e.g., Google, Inc. v. Noorinet, FA 138879 (Nat. Arb. Forum July 6, 2011; Google, Inc. v. Noorinet, FA 1502299 (Nat. Arb. Forum Sept. 24, 2013). Past panels have found that a respondent with a documented history of involvement in UDRP decisions resulting in transfers of the respondent’s registered domain names constitutes bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent’s has engaged in a pattern of bad faith registrations as evidenced by Respondent’s history of involvement in UDRP proceedings that resulted in the transfer of Respondent’s domain names, which constitutes bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant claims Respondent has knowledge of Complainant’s NAUTICA mark prior to registering the <nauticashop.com> domain name due to the ubiquitous presence, advertising, promotion and fame of the Complainant’s mark. Constructive notice has been generally regarded by prior panels as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well aware of Complainant’s mark, then the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nauticashop.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 20, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page