IDT Corporation v. tony mousa / mousacom
Claim Number: FA1403001548108
Complainant is IDT Corporation (“Complainant”), represented by Nana Japaridze of ReedSmith LLP, New York, USA. Respondent is tony mousa / mousacom (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <idtexpress.net>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 11, 2014; the National Arbitration Forum received payment on March 11, 2014.
On March 12, 2014, GODADDY.COM, LLC confirmed by e-mail message ad-dressed to the National Arbitration Forum that the <idtexpress.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current reg-istrant of the name. 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 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@idtexpress.net. Also on March 18, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2014, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant is a Fortune 100 international telecommunications company and a leading wholesale carrier of international long distance calls.
Complainant holds a registration, which is on file with the United States Patent and Trademark Office (“USPTO”) for the IDT EXPRESS service mark (Registry No. 4,375,132, registered July 30, 2013).
Respondent registered the <idtexpress.net> domain name on November 5, 2013.
Respondent’s <idtexpress.net> domain name is substantively identical to Com-plainant’s IDT EXPRESS mark.
Respondent has not been commonly known by the disputed domain name.
Respondent’s registration and use of the domain name has been done without Complainant’s consent.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s intention in registering and using the disputed domain name is fraudulently to profit by disrupting and diverting business from Complainant by posing as one of its employees.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the IDT EXPRESS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demon-strates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Lebanon). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a re-spondent operates, it being sufficient that a UDRP complainant can demonstrate rights in a mark in some jurisdiction). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that under Policy ¶ 4(a)(i) it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <idtexpress.net> domain name is substant-ively identical to Complainant’s IDT EXPRESS mark. The domain name contains the mark in its entirety, only eliminating the space between its terms and adding the generic top-level domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of identity or confusing similarity under the standards of the Policy. See, for ex-ample, Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel there finding the domain name <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.”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <idtexpress.net> domain name, and that Respondent’s registration and use of the domain name has been done without Complainant’s consent. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “tony mousa / mousacom,” which does not resemble the domain name. On this record we must conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not common-ly known by the <coppertown.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the do-main name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s intention in registering and using the <idtexpress.net> domain name was fraudulently to profit by diverting business from Complainant by posing as one of Complainant’s employees. Such a use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <idtexpress.net> domain name to profit by fraudulently posing as one of Com-plainant’s employees disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as evidence that Respondent registered and uses the domain name in bad faith. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002), the panel there finding, under Policy ¶ 4(b)(iii), bad faith registration and use of a domain name that was employed to disrupt a UDRP complainant’s business. See also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that a respondent’s attempt to employ a domain name that was confusingly similar to the mark of a UDRP complainant in order to im-personate an employee of that complainant was evidence of bad faith registration and use of the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the contested <idtexpress.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 17, 2014
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