MSI Holdings, LLC v. Nova Giragossian
Claim Number: FA1403001547275
Complainant is MSI Holdings, LLC (“Complainant”), represented by Jonathan M. Doloff of Pergament Gilman & Cepeda LLP, New Jersey, USA. Respondent is Nova Giragossian (“Respondent”), Campbell, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <spexspex.com>, <crmspex.com>, <spexglobal.com>, <mdspex.com>, <medicalspex.com>, <spexfamily.com>, and <wwspex.com>, registered with Godaddy.Com, Llc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq, as Chair of the three-member Panel.
Honorable Charles K. McCotter, Jr. (Ret), as Co-Panelist.
Paul M. DeCicco, Esq. as Co-Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2014; the National Arbitration Forum received payment on March 6, 2014.
On March 7, 2014, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <spexspex.com>, <crmspex.com>, <spexglobal.com>, <mdspex.com>, <medicalspex.com>, <spexfamily.com>, and <wwspex.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com,Llc has verified that Respondent is bound by the Godaddy.Com, 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 March 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2014 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@spexspex.com, postmaster@crmspex.com,postmaster@spexglobal.com,postmaster@mdspex.com, postmaster@medicalspex.com, postmaster@spexfamily.com, and postmaster@wwspex.com. Also on March 7, 2014, 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.
A timely Response was received and determined to be complete on March 26, 2014.
A timely additional submission from Complainant was received and determined to be complete on March 28, 2014.
On April 7, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Chair of the three-member Panel, Honorable Charles K. McCotter, Jr. (Ret) and Paul M. DeCicco, Esq. as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant contends to be the owner of the mark SPEX in the United States of America, which was registered on January 8, 1985 to cover goods of international classes 1 and 9, and was used for the first time in the US commerce on January 1, 1954.
2. Complainant also owns international trademark registrations for the mark SPEX, i.e. India, OHIM, France, Taiwan, Korea and Japan. These registrations cover goods and services included in international classes 1, 5, 9 and 37.
3. Complainant globally sells its goods under its mark SPEX through its licensees and related companies, such as SPEX SamplePrep, LLC and SPEX CertiPrep Group, LLC. Both Complainant and the mark SPEX have achieved considerable worldwide recognition, including, but not limited to, North America.
4. The disputed domain names are identical/confusingly similar to the mark SPEX because it is fully incorporated in them. The dominant element in the disputed domain names is the term “SPEX”; the other words of which they are made up are generic/descriptive words of what SPEX goods are or do.
5. Being SPEX the dominant element in the disputed domain names, Complainant is likely to be deemed as their real source or at least as a sponsor or as somehow affiliated with them.
6. Consumers/internet users seeking for information about Complainant’s mark are also likely to be taken advantage of by Respondent, because the websites to which the disputed domain names revert to display advertisements of Respondent’s goods/services and Complainant’s competitors goods. These advertisements act as revenue generators for Respondent and Complainant’s competitors.
7. Respondent admitted having knowledge of Complainant and Complainant’s mark SPEX prior to registering the disputed domain names. Complainant’s attorney sent a Cease and Desist Letter on January 20, 2014 to Respondent referring only to three out of the seven disputed domain names (i.e. spexspex.com, mdspex.com, and medicalspex.com). After his response to said letter, parked the domain names in a website displaying telephone products and computer services. Such passive holding of the disputed domain names also evidences how Respondent has not made a bona fide offering of goods/services under Policy ¶ 4(c)(iii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
8. In all, Respondent lacks of rights or legitimate interests in the disputed domain names: Respondent does not use, has never used and is not in preparation to use the domain names in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use. Respondent is not commonly known by, and has not intended to be commonly known by, the disputed domain names. Complainant has not licensed or authorized Respondent to use its mark SPEX.
9. Respondent acquired the disputed domain names with actual knowledge of Complainant’s mark SPEX. Acquisition of the disputed domain names with actual knowledge indicates bad faith registration and use.
10. Respondent has shown a pattern of warehousing at least seventy one (71) domain names including Complainant’s mark SPEX (including its misspellings). Such pattern is also evidence of Respondent’s bad faith.
11. Respondent deliberately made up the disputed domain names with terms such as “global”, “family”, “medical”, “ww” (acronym that stands for “world wide”), “md” (acronym that stands for “medical”) and “crm” (acronym that stands for “certified reference materials”) so as to suggest a connection to Complainant, given that they represent the goods/services that are commonly associated to Complainant.
B. Respondent
1. Respondent claims the disputed domain names and the websites to which they revert to do not have any content referring to Complainant’s field of business.
2. Respondent in good faith redirected the disputed domain names to a different (and current) location after receiving Complainant’s Cease and Desist Letter.
3. Respondent even agreed on transferring the disputed domain name <spexspex.com.co> to Complainant in good faith after receiving their Cease and Desist Letter. However Complainant, using a bullying tactic, delayed its acceptance of said offer just to be able to include said domain name in the Complaint.
C. Additional Submissions
Complaint submitted the following additional statements after being served with Respondent’s response:
1. Respondent’s alleged behavior in good faith long after the registration of the disputed domain names and after having knowledge of this dispute do not cure Respondent’s bad faith registration and use of the disputed domain names before January 20, 2014.
2. Respondent failed to provide the Panel with all the correspondence exchanged with Complainant’s attorney after receiving the Cease and Desist Letter of January 20, 2014. In those deliberately left out communications Respondent failed to comply with all of Complainant’s attorney’s demands. Namely, Complainant’s attorney demanded Respondent to confirm whether he had applied for/registered/used other domain names/trademarks/service marks/trade names/business names, etc. including the term SPEX. Whereas Respondent complied with the other demands, he completely and continuously ignored this final one. Therefore, Complainant ordered a Reverse WHOIS search, to determine what other domain names Respondent had registered using the mark SPEX. Complainant discovered that Respondent has registered and warehoused at least seventy one (71) domain names including the mark SPEX and its misspellings SPECS and SPIX.
3. After such discovery, Complainant sent a letter to Respondent in which was explained that his neglect to provide information requested about the registered and parked domain names was the reason for the alleged delayed response to the domain name <spexspex.com> transfer offer.
4. Respondent claimed to be bound by a NDA that prevented him from disclosing information about the registration and use of the current and future domain names including the word SPEX.
5. Complainant initiated this UDRP procedure only after trying to settle this matter with Respondent, and also, after Respondent’s failure to comply with Complainant’s primary and reasonable demands.
1. The seven disputed domain names are confusingly similar to Complainant’s mark SPEX.
2. Respondent lacks of rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names 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."
Likewise, paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that: “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
The Panel will make special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three (3) elements to obtain an order that a domain name be cancelled or transferred:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the Panel will determine whether or not the disputed domain names are identical or confusingly similar to the trademark in which Complainant has rights. Secondly (Section B), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain names; and thirdly (Section C), the Panel will establish whether or not the disputed domain names have been registered and are being used in bad faith by Respondent.
Complainant contends to be the owner of the mark SPEX in the United States of America, which was registered on January 8, 1985 and has been used in the US market since January 1, 1954 to identify goods covered in international classes 1 and 9.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
The Industrial Property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world. When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark within the classifications.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the mark SPEX. Annexes 1, 3, 4, 5, 6, 7, 8, and 9 to the Complaint include:
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the mark SPEX and the exclusive right to use it in the US, the European Union country-members, India, Taiwan, Korea, and Japan in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]
Thus, Complainant established its rights in the mark SPEX, for purposes of Paragraph 4(a)(i) of the Policy
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
Complainant alleges that the disputed domain names are identical or confusingly similar to its mark SPEX. This identity/confusingly similarity derives from the incorporation of the mark SPEX in the disputed domain names, along with generic/descriptive terms such as “crm”, “md”, “ww”, “medical”, “global” and “family” and the generic top-level domain name “.com”.
Respondent enclosed to his Response a printout of the WIKIPEDIA website referring to the term “SPEX”’s meaning, a printout of the USPTO website including a listing of marks including the term “SPEX” and printouts of websites to which six different domain names including the term “SPEX” revert to. Although Respondent did not directly address Complainant’s contentions regarding the first element of the Policy, the Panel believes the above mentioned evidence submitted by Respondent was intended as his response.
Before establishing whether or not the disputed domain names <spexspex.com>, <crmspex.com>, <spexglobal.com>, <mdspex.com>, <medicalspex.com>, <spexfamily.com>, and <wwspex.com> are confusingly similar to Complainant’s mark SPEX, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es, nor the insertion of a gTLD have a distinctive function. UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, WIPO Case No.D2000-0477, the Panel stated that: “the addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, ”.com” is one of only several such gTLDs, and ”.com” does not serve to identify a specific enterprise as a source of goods or services.”
It is evident that all of the disputed domain names are made up of the term SPEX. Whether or not such design had an specific intention is not relevant for Paragraph 4(a)(i) of the Policy but for Paragraph 4(a)(iii). What is relevant in this first analysis is that, objectively, the disputed domain names reproduce in its entirety the mark SPEX.
If Respondent intended to prove that the word SPEX is a common term, he failed in his attempt. SPEX is not a word, not even slang in the English language. Moreover, SPEX is a mark registered in the name of Complainant in a number of jurisdictions including the one in which Respondent resides. If Respondent disagrees with this registration because of the alleged “common use” of the term SPEX, there might be legal means available to challenge it. Registering domain names comprising a registered mark is not one of them.
Also, the Panel agrees with Complainant on the conclusion that including generic/descriptive terms and/or acronyms in the second-level disputed domain names is not sufficient to make them different from the mark SPEX. As Complainant contended, those terms are either commonly used in the industry in association with Complainant’s goods/services or are used to describe them/what they do[3].
Complainant also contended, in relation to the disputed domain name <wwspex.com>, that it is confusingly similar to the mark SPEX because Respondent improperly took advantage of a frequent and common typo made by internet users. This is a typical case of typosquatting and therefore the Panel also finds the disputed domain name <www.spexspex.com> confusingly similar to the mark SPEX.
As per this reasoning, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark SPEX, and thus the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.
In the Julian Barnes v. Old Barn Studios Ltd., WIPO Case No. D2001-0121 (Mar 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met its burden under Paragraph 4(a)(ii) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain names: i) Respondent does not use, has never used and is not in preparation to use the domain names in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use; ii) Respondent is not commonly known by, and has not intended to be commonly known by, the disputed domain names; and iii) Complainant has not licensed or authorized Respondent to use its mark SPEX
Complainant explains why Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names: Respondent’s disputed domain names currently resolve to websites displaying related and unrelated advertisements that trade on the goodwill associated with Complainant’s SPEX mark. Before receiving Complainant’s Cease and Desist Letter dated January 20, 2014, Respondent’s disputed domain names resolved to websites displaying commercial links and advertisements of chemical companies, some of which are competitors of Complainant.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of proof to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy lists circumstances that if shown indicate Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent responded to Complainant’s contentions asserting that the disputed domain names revert to websites which do not have content referring to Complainant’s field of business. In addition, and as alleged evidence of his good faith, Respondent contends that right after receiving Complainant’s Cease and Desist Letter dated January 20, 2014, he redirected the disputed domain names to their current location (as shown in Annex 19 to the Response): A website that features the heading “TELESPEX Cloud Hosted Business Phone Systems” and a website that features the heading “DATPROS Professional Data Recovery Services”.
The fact that these current locations are unrelated to Complainant’s business is irrelevant and does not prove Respondent’s rights or legitimate interest on the disputed domain names. As per Policy ¶ 4(c)(i), Respondent needs to show that he had used, or has prepared to use, the disputed domain names in connection with a bona fide offering of goods before having notice of this dispute. Respondent failed to do so. The records shows that before January 20, 2014, that is, before Respondent had notice of this dispute, the disputed domain names reverted to parking websites displaying click-through links to Complainant’s competitors. This fact suggests the disruption of Complainant’s business, improper and false association of the disputed domain names with Complainant, and an unlawful use of Complainant’s goodwill and reputation.
As per Policy ¶ 4(c)(iii), Respondent could have proved that he is currently making a legitimate noncommercial or fair use of the domain names. However, the record shows that Respondent is currently using the domain names for commercial purposes, and the way in which Respondent is using them cannot be deemed as fair use under the Policy.
Lastly, WHOIS information for the disputed domain names lists “Novo Giragossian” as registrant. Respondent self-identifies as “Novo Giragossian and there is nothing in the record that otherwise suggests that Respondent is known by the domain name. Therefore, the Panel finds that Respondent is not known by the disputed domain name under Policy ¶4(c)(ii).
Given the foregoing the Panel concludes that Respondent lacks rights or legitimate interests in each of the disputed domain names, <spexspex.com>, <crmspex.com>, <spexglobal.com>, <mdspex.com>, <medicalspex.com>, <spexfamily.com>, and <wwspex.com>,pursuant to paragraph 4(a)(ii) of the Policy.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the sole Panelist to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant claims that Respondent acquired the disputed domain names with knowledge (actual or constructive) of Complainant’s mark SPEX. Moreover, Respondent admitted having knowledge of Complainant’s mark SPEX in his response to Complainant’s Cease and Desist Letter dated January 20, 2014. Complainant and its mark SPEX have achieved considerable worldwide recognition, including, but not limited, in North America.
As per the USPTO certifications submitted by Complainant, the mark SPEX’s first use in the United States of America dates back to 1954. In addition, the mark SPEX has been registered in a number of jurisdictions as properly proved by Complainant. Therefore, the Panel assumes that the mark SPEX indeed has a high level of recognition and positioning in the Complainant’s field of business.
Respondent did not specifically admit having knowledge of the mark SPEX at the time of the disputed domain names’ registration. However, evidence of such knowledge is the disputed domain names themselves: SPEX is not a word in the English language, which is the language of the links posted on the Respondent’s former and current websites. In addition, English is the language spoken in the State of California, US, the location of Respondent according to the WHOIS contact information. The fact that at least some of the terms incorporated into the disputed domain names along with Complainant’s trademark are suggestive of Complainant’s business further indicates that Respondent was well aware of Complainant at the time the domain names were registered. Thus, in the Panel’s view, Respondent deliberately took someone else’s mark, and combined it with suggestive generic terms/acronyms such as “medical”, “global”, “crm”, “online” and even frequent typos made by Internet users like “ww” and registered a number of domain names and to create a business around them.
The Panel deems that the mere fact of knowingly using another’s trademark in a confusingly similar domain name indicates registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision: the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, Complainant contends that Respondent has registered and warehoused seventy one domain names including the term “SPEX”. Also, that Respondent concealed this information from Complainant when the latter tried to settle this matter and also tried to conceal it from the Panel in his Response.
Complainant submitted as evidence of Respondent’s bad faith the results of the reverse WHOIS conducted by Complainant on Respondent. It reveals domain names including the mark SPEX, and also, typos of the mark SPEX. As mentioned in Section B, these domain names revert to the websites www.telespex.com and www.datpros.com. Far from revealing a real and lawful interest in developing a “TELESPEX” or “DAT PROS” business, this fact shows that Respondent has engaged in a pattern of bad faith registration of domain names with the mark SPEX. Why registering and having more that seventy domain names reverting to no more than one website? Why making up domain names with words such as “party”, “property”, “school”, “events” to be located at a website offering phones and phone systems?
A prior panel has found: “a clear pattern of conduct in this behavior, as it has been evidenced that [Respondent] has registered several domain names, bearing registered trademarks, and none of the trademarks registered belong to him. This can be considered as evidence of Respondent’s intention of taking advantage of a third party’s goodwill in order to divert and mislead the web surfer to its web pages and services”[4]. This Panel agrees with that panel and with Complainant: The reverse WHOIS conducted by Complainant, added to Respondent’s knowledge of Complainant’s mark SPEX at the time of the disputed domain names’ registration. The registrations disclosed by the look-up disclose a pattern of conduct that shows Respondent’s registration of the disputed domain names to be in bad faith.
Complainant shows in its papers that Respondent used the disputed domain names in bad faith: As already mentioned, before January 20, 2014, they were “parked” at websites displaying click-through link-related web pages of Complainant’s competitors. Complainant asserts that Respondent may have collected revenue from misled internet users clicking on those links.
The Panel believes that “parking websites” do not necessarily entail per se use of a domain name in bad faith. They may be intended to reserve a domain name for future developments, or to prevent cybersquatting. However, the Panel also believes that registering a domain name which comprises someone else’s highly recognized trademark so as to make profit from diverted Internet users is use in bad faith as per Policy, paragraph 4(b)(iv)[5].
Respondent or some third party desired to collect revenue from misdirected Internet users who searched for information regarding the SPEX branded goods/services mistakenly arrived at one of Respondent’s websites. There, such users were presented with pay-per-click links. Using the domain name in this manner demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)[6].
The three elements of the Policy ¶ 4(a) are satisfied in the present case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spexspex.com>, <crmspex.com>, <spexglobal.com>, <mdspex.com>, <medicalspex.com>, <spexfamily.com>, and <wwspex.com> domain names be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq, as Chair of the three-member Panel.
Honorable Charles K. McCotter, Jr. (Ret), as Co-Panelist.
Paul M. DeCicco, Esq. as Co-Panelist.
Dated: April 28, 2014
[1] See MatchNet PLC. V. MAC Trading, WIPO Case No. D2000-0205, May 11, 2000, citing The British Broadcasting Corp. v. Jaime Renteria, WIPO Case No. D2000-0050, Mar. 23, 2000.
[2] See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201, May 5, 2002.
[3] See Calzedonia S.p.A. v. Max M. Lind, (WIPO Case No. D2013-2218, February 13, 2014).
[4] See DatingDirect.com Ltd. v. Michael Turner (WIPO Case No. FA0410000349013, Dec 16, 2004).
[5] See No. 3.
[6] See Allianz of Am. Corp. V. Bond (NAF Case No. 680624, June 2, 2006).
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