SwissINSO S.A. v. Whois Privacy Shield Services
Claim Number: FA1410001585415
Complainant is SwissINSO S.A. (“Complainant”), represented by Jocelyn Jacbobson of Reitler Kailas & Rosenblatt, New York, USA. Respondent is Whois Privacy Shield Services (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kromatix.com>, registered with Threadwalker.com, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2014; the National Arbitration Forum received payment on October 20, 2014.
On October 23, 2014, Threadwalker.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kromatix.com> domain name is registered with Threadwalker.com, Inc. and that Respondent is the current registrant of the name. Threadwalker.com, Inc. has verified that Respondent is bound by the Threadwalker.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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@kromatix.com. Also on October 24, 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 November 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
Policy ¶ 4(a)(i). Complainant owns the KROMATIX mark via trademark registration Switzerland’s Federal Institute of Intellectual Property (“FIIP”) (Reg. No. 647,079 registered May 13, 2013. Complainant uses the KROMATIX mark in connection with energy engineering with special emphasis on a unique technology using color treated glass for photovoltaic and thermal panel applications. The <kromatix.com> domain name is identical to this KROMATIX mark as the addition of the generic top-level domain is inconsequential.
Policy ¶ 4(a)(ii). Respondent lacks rights or legitimate interests in the <kromatix.com> domain name. The KROMATIX term is highly distinctive with no meaning apart from Complainant’s business and Respondent is not commonly known by the disputed domain name nor affiliated with Complainant. Respondent is making neither a bona fide offering of goods or services at the disputed domain name, nor a legitimate noncommercial use of the domain name. The disputed domain name resolves to a blog site unrelated to Complainant. Respondent’s lack of rights in the domain name is further demonstrated by Respondent’s willingness to sell the disputed domain name for more than the actual purchase price. In addition, for two years prior to Respondent’s purchase of the disputed domain name, Complainant owned and used the disputed domain name; however, due to an oversight, the domain name was inadvertently failed to renew the domain name and the name was registered by Respondent.
Policy ¶ 4(a)(iii). Respondent’s efforts to sell the <kromatix.com> domain name for more than the out-of-pocket expenses is indicative of Respondent’s bad faith. Respondent purchased the domain name only for the purpose of selling it.
B. Respondent
Respondent failed to submit a Response. The <kromatix.com> domain name was registered March 21, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 uses the KROMATIX mark in connection with energy engineering with special emphasis on a unique technology using color treated glass for photovoltaic and thermal panel applications. Complainant claims to own this KROMATIX mark via trademark registration with Switzerland’s Federal Institute of Intellectual Property (“FIIP”) (Reg. No. 647,079 registered May 13, 2013. The Panel agrees that Complainant’s FIIP trademark holding serves to demonstrate Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i), despite Respondent’s apparent residence in the United States. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant further argues that the <kromatix.com> domain name is identical to this KROMATIX mark as the addition of the generic top-level domain (“gTLD”) is inconsequential. Prior panels have consistently agreed that the affixation of a gTLD serves no distinguishing value in domain names. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Accordingly, the Panel agrees that the <kromatix.com> domain name is identical to the KROMATIX mark pursuant to 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 urges that Respondent lacks rights or legitimate interests in the <kromatix.com> domain name. Complainant first argues that the KROMATIX term is highly distinctive with no meaning apart from Complainant’s business and Respondent is not commonly known by the disputed domain name nor affiliated with Complainant. As Respondent has failed to provide any evidence to the contrary, the Panel agrees that the record is void of any indication that Respondent is commonly known by the <kromatix.com> 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further argues that Respondent is making neither a bona fide offering of goods or services at the disputed domain name, nor a legitimate noncommercial use of the domain name. Complainant claims the disputed domain name resolves to a blog site unrelated to Complainant. The Panel sees Complainant has provided screen grabs from the resolving page, which includes blog posts with titles such as “How To Unlock The Secret Of Human Behavior,” and “The Right Marketing Materials To Your Automatic Repair Companies.” See Compl., at Attached Ex. D. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel wrote, “Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).” The Panel agrees that Respondent’s apparent diversionary efforts evince no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent’s lack of rights in the domain name is further demonstrated by Respondent’s willingness to sell the disputed domain name for more than the actual purchase price. The Panel notes that Respondent has advertised the sale of the domain name in the amount of €72 EUR, or $100 USD equivalent. See Compl., at Attached Ex. E. Prior panels have held that a respondent’s general offer to sell the disputed domain name in an amount in excess of out-of-pocket costs is evidence that the respondent lacks rights in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). The Panel determines that Respondent’s willingness to sell the disputed domain name in the amount of €72 EUR is further evidence that Respondent lacks rights in the disputed <kromatix.com> domain name.
Complainant asserts that Respondent’s lacks of rights is further evidenced by Respondent’s registration of this <kromatix.com> domain name subsequent to Complainant’s own holding of the name. Complainant explains that for two years prior to Respondent’s purchase of the disputed domain name, Complainant owned and used the disputed domain name; however, due to an oversight, the domain name was inadvertently allowed to lapse. The Panel agrees that Respondent lacks rights and legitimate interest in the <kromatix.com> domain name pursuant to Policy ¶ 4(a)(ii) because it registered the domain name after Complainant’s inadvertent lapse. See Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse).
Complainant contends that although a letter was sent to Respondent at the mailing address listed in the WHOIS registration for the disputed domain name, it could not be located at that address. No response was made to emails sent to the email address for Respondent in the WHOIS registration nor when the registrar forwarded correspondence to Respondent (Exhibits B and G).
Complainant also argues that Respondent’s efforts to sell the <kromatix.com> domain name for more than the out-of-pocket expenses is indicative of Respondent’s bad faith.
The Panel recalls that Respondent has advertised the sale of the disputed domain name for €72 EUR, or $100 USD equivalent. See Compl., at Attached Ex. E. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the pane concluded that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name.
The listed price at the website for sale of the disputed domain name may not be considered as being far more than actual purchase price. However, the Panel considers all of the circumstances that i) the website resolved by the disputed domain name appears to contain no real content – all random postings by someone with the name Pratt –and certainly none related to the disputed domain name, ii) Respondent has failed to respond to any bid for such website, iii) there was a notice by “The Sedo Team” seemingly Respondent’s sales agent to the effect that the previous offer for the disputed domain name amounting to EUR 72 was no longer valid since the time limit of seven days had lapsed, and thus required to extend or increase the bid (Exhibit E to Complaint), iv) Respondent did not respond to the Complainant’s letter offering an amicable resolving of the disputes, and v) for two years prior to Respondent’s purchase of the disputed domain name, Complainant owned and used the disputed domain name; however, due to an oversight, the disputed domain name was inadvertently failed to renew the domain name and the name was registered by Respondent.
Therefore, the Panel determines that Respondent has engaged in bad faith use and registration pursuant to Policy ¶ 4(b)(i) by offering to sell the <kromatix.com> domain name beyond out-of-pocket costs coupled with all the circumstances addressed above.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kromatix.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 2, 2014
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