Seneca Resources Corporation v. Sparta Trading SA
Claim Number: FA1310001524387
Complainant is Seneca Resources Corporation (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Sparta Trading SA (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <senecaresources.com>, registered with Moniker Online Services, LLC.
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 October 15, 2013; the National Arbitration Forum received payment on October 15, 2013.
On October 16, 2013, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <senecaresources.com> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@senecaresources.com. Also on October 17, 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 11, 2013, 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 (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.
A. Complainant
1. Complainant has used the SENECA RESOURCES mark in connection with exploration and searching for oil and gas since as early as 1980.
2. Complainant has rights in the SENECA RESOURCES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,618,355 registered May 12, 2009) and (Reg. No. 3,618,356 registered May 12, 2009).
3. Respondent’s <senecaresources.com> domain name is identical to Complainant’s SENECA RESOURCES mark.
4. Respondent is neither commonly known by the disputed domain name nor has it acquired trademark or service mark rights in the disputed domain name.
5. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
6. Respondent’s disputed domain name is currently inaccessible.
7. Respondent’s disputed domain name formerly resolved to a website featuring a series of pay-per-click advertising links, which would previously generate revenue for Respondent.
8. Respondent’s intentional diversion of Internet users seeking Complainant’s official website is sufficient to demonstrate Respondent’s bad faith use and registration.
9. Respondent’s failure to currently use the domain name to host an active website is sufficient to demonstrate Respondent’s bad faith.
10. Respondent registered the <senecaresources.com> domain name on April 22, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SENECA RESOURCES mark. Respondent’s domain name is confusingly similar to Complainant’s SENECA RESOURCES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <senecaresources.com> domain name, and that Respondent registered and uses the 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 that it has used the SENECA RESOURCES mark in connection with exploration and searching of oil and gas since at least as early as 1980. Complainant claims that based on its 30 or more years of continuous use, consumers now recognize the mark and associate it exclusively with Complainant. Complainant also has rights in the SENECA RESOURCES mark through its registrations with the USPTO (Reg. No. 3,618,355 registered May 12, 2009) and (Reg. No. 3,618,356 registered May 12, 2009). Providing evidence of a registration for a given mark is sufficient to establish rights in that mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Moreover, it is irrelevant whether a complainant registers a trademark in the location of respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <senecaresources.com> domain name is identical to Complainant’s SENECA RESOURCES mark under Policy ¶ 4(a)(i). Respondent merely adds the gTLD “.com” to Complainant’s mark and also removes the space between “Seneca” and “Resources.” Adding a gTLD and removing a space in a registered mark still renders the disputed domain name identical to the complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel thus concludes that Respondent’s <senecaresources.com> domain name is identical to Complainant’s SENECA RESOURCES mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has no rights or legitimate interests in the <senecaresources.com> domain name because Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant claims that it has neither authorized nor licensed Respondent to use the SENECA RESOURCES mark in any way. The WHOIS information for the disputed domain name lists “Sparta Trading SA info@spartatrading.com” as the registrant. A respondent cannot claim rights in a domain name based on being commonly known by the domain where the WHOIS record and other available information fails to demonstrate any meaningful connection. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s current use of the <senecaresources.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant notes that Respondent’s disputed domain name is currently inaccessible. The non-use of a domain name does not qualify for the protections granted in UDRP proceedings by Policy ¶¶ 4(c)(i) or 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds that Respondent’s current, inactive holding of the <senecaresources.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Further, Complainant alleges that Respondent’s former use of the <senecaresources.com> domain name is similarly insufficient for a finding of rights or legitimate interests on Respondent’s behalf. According to Complainant, Respondent’s disputed domain name formerly resolved to a website featuring a series of pay-per-click advertising links, which would generate revenue for Respondent. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held 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). Accordingly, the Panel finds that Respondent’s previous use of the <senecaresources.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the intentional diversion of Internet users seeking Complainant’s official website is sufficient to demonstrate Respondent’s bad faith use and registration. Complainant contends that Respondent previously used the disputed domain name to resolve to a commercial website featuring links to Complainant’s competitors. Using a disputed domain name to resolve to a website offering links and advertisements to competitors of a complainant, disrupts a complainant’s business and thereby indicates bad faith use and registration under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent’s prior use of the disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s former use of the disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s <senecaresources.com> domain name previously resolved to a website containing a series of pay-per-click advertising links, resulting in financial revenue for Respondent. Complainant also contends that Respondent’s prior use of an identical domain name would confuse Internet users and lead them to mistakenly believe that the links that were present on Respondent’s website were associated with Complainant. Bad faith use and registration exists under Policy ¶ 4(b)(iv) when a respondent uses an identical domain name to resolve to a website featuring links and advertisements that create revenue for respondent. See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent has registered and is using the <senecaresources.com> domain name in bad faith by failing to make an active use of the disputed domain name. Complainant claims that Respondent’s domain name currently resolves to an inaccessible website. Failure to use a domain name to host an active website is sufficient evidence to demonstrate bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel agrees and concludes that Respondent’s non-use of the disputed domain name indicates bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <senecaresources.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 25, 2013
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