Stafford-Miller (Ireland) Limited v. Whois Privacy Shield Services
Claim Number: FA1412001596040
Complainant is Stafford-Miller (Ireland) Limited (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Whois Privacy Shield Services (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parodontax.com>, registered with Julius Caesar, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2014; the National Arbitration Forum received payment on December 19, 2014.
On December 30, 2014, Julius Caesar, LLC confirmed by email to the National Arbitration Forum that the <parodontax.com> domain name is registered with Julius Caesar, LLC and that the current registrant of the name is Domain Admin, Indus Domains LLC, Delaware, USA. Julius Caesar, LLC has verified that the registrant is bound by the Julius Caesar, 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 January 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@parodontax.com. Also on January 2, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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.
On January 7, 2015, the Forum received correspondence from Indus Domains LLC stating that it was merely a reseller and identifying the owner of the <parodontax.com> domain name as Arun Davis, Mumbai, India. The Forum replied to this correspondence, sending a copy of its reply to Arun Davis at the email address provided by Indus Domains LLC.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant and its affiliate companies make prescription medicines, vaccines, over-the-counter medicines, and oral care and nutritional healthcare products. Complainant and its predecessors in interest have used the PARODONTAX mark in connection with dental and oral hygiene products since at least as early as 1955. The mark has been registered for many years in the European Community, India, and various other jurisdictions around the world.
The disputed domain name, <parodontax.com>, was registered on or about July 7, 2014. The domain name was registered in the name of a privacy service, shielding the identity of the actual registrant from the public. Complainant alleges that the disputed domain name is identical and confusingly similar to its PARODONTAX mark, consisting only of the mark and the “.com” top-level domain.
Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name. In support thereof, Complainant states that Respondent is not known by the name PARODONTAX, and that Complainant has not authorized anyone to register the domain name. Complainant asserts that the domain name is being used for a “link farm” website comprised of pay-per-click links to third-party websites offering various financial and tax preparation services and products, and that this use does not constitute a bona fide offering of goods or services.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant notes that a statement appears at the top of the website associated with the domain name offering to sell the name, indicating that Respondent registered the domain name with the intent to sell it for valuable consideration in excess of Respondent’s out-of-pocket costs. Complainant also accuses Respondent of using the domain name to attract Internet users to Respondent’s website for commercial gain, by creating confusion with Complainant’s PARODONTAX mark. Complainant claims that Respondent had constructive knowledge of Complainant’s mark prior to registration of the domain name, further supporting an inference of bad faith.
And Complainant asserts that there is no plausible explanation for Respondent’s selection of the disputed domain name other than to create confusion with and trade on the goodwill associated with Complainant’s mark, and to profit from a possible sale of the name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.”).
The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the “.com” top-level domain, which is irrelevant for purposes of paragraph 4(a)(1) of the Policy. See, e.g., Abt Electronics, Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (finding <abt.com> identical to ABT). The Panel finds that the disputed domain name is identical to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is identical to Complainant’s mark, and was registered without Complainant’s authorization. It is being used for a website containing pay-per-click links likely triggered by the word “tax,” which happens to appear as a substring of the domain name; the site also solicits offers to purchase the domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired “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.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Paragraph 4(a)(iii) requires proof that Respondent was aware of Complainant or its mark when it registered the domain name, and that the registration was in some way targeted at Complainant or its mark. Constructive notice of the mark is insufficient; the Respondent must have actually known of the mark, although actual knowledge may be inferred from circumstantial evidence. See Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013).
As stated above, the disputed domain name is being used for two purposes: to solicit offers to purchase the name, and to display pay-per-click links. Complainant’s mark is distinctive and presumably coined, and the Panel is unaware of any plausible reason that one might use the term PARODONTAX or the disputed domain name other than to refer to or create confusion with Complainant’s mark. Under the circumstances, the Panel infers that Respondent’s selection and use of the domain name were motivated by a desire to exploit confusion with Complainant’s mark. The Panel therefore finds bad faith registration and use based upon either or both of paragraphs 4(b)(i) and 4(b)(iv). Respondent’s attempt to shield its identity through the use of a privacy service, although not itself a conclusive indicator of bad faith, lends further support to this conclusion. See, e.g., Lockheed Martin Corp. v. Mr Healrd Diviolrg, FA 1562892 (Nat. Arb. Forum July 1, 2014).
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parodontax.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 26, 2015
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