Pettigo Comercio Internacional Lda v. Siju Puthanveettil
Claim Number: FA1501001600741
Complainant is Pettigo Comercio Internacional Lda (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Siju Puthanveettil (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lycaradio.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2015; the National Arbitration Forum received payment on January 20, 2015.
On January 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lycaradio.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant 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 January 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2015 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@lycaradio.com. Also on January 21, 2015, 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 February 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant owns the LYCA mark through registration with trademark authorities, including the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 4,658,951, registered Sept. 9, 2006). Complainant uses the LYCA mark in connection with its telecommunication services, including residential and corporate telecommunications. The <lycaradio.com> domain name is confusingly similar to the LYCA mark. The domain name incorporates the mark in full, inserts a generic term “radio,” and adds a gTLD “.com.”
Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. Further, Complainant has not authorized Respondent’s use of the mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name initially resolved to a website featuring a variety of affiliate links.
Respondent has engaged in bad faith registration and use of the <lycaradio.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). Further, as Respondent’s original website listed a variety of affiliate links, Respondent seeks to benefit commercially from the likelihood of confusion with Complainant’s mark. In addition, Respondent opportunistically registered the disputed domain name immediately after news broke that Complainant was acquiring Sunrise Radio. Finally, Respondent must have had knowledge of Complainant’s famous mark at the time of domain name registration, which further supports a finding of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a company incorporated in Portugal and engaged in the provision of telecommunication services, including residential and corporate telecommunications.
2. Complainant owns the LYCA mark through registration with trademark authorities, including the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 4,658,951, registered Sept. 9, 2006).
3. Respondent registered the disputed domain name on February 6, 2014. The disputed domain name has resolved to a website featuring a variety of affiliate links.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant owns the LYCA mark through registration with trademark authorities, including the OHIM (e.g., Reg. No. 4,658,951, registered Sept. 9, 2006). Complainant uses the LYCA mark in connection with its telecommunication services, including residential and corporate telecommunications. The Panel concludes that Complainant’s valid registration of LYCA with OHIM sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Devitt Ins. Servs. Ltd. v. Stevens, FA 1257387 (Nat. Arb. Forum May 21, 2009) (“The Panel finds Complainant has established rights in the DEVITT mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the OHIM.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LYCA mark. Complainant claims the <lycaradio.com> domain name is confusingly similar to the LYCA mark. Complainant argues that the domain name incorporates the mark in full, inserts a generic term “radio,” and adds a gTLD “.com.” Prior panels have found such alterations insufficient to distinguish the mark from the otherwise incorporated mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). As Respondent has merely added a generic word and a gTLD, the Panel determines that such modifications do not distinguish the disputed domain name from the incorporated mark, and therefore finds confusing similarity under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LYCA mark and to use
it in Respondent’s domain name;
(b) Respondent has then used the disputed domain name so that it resolved to a website featuring a variety of affiliate links
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. The Panel recalls the WHOIS record lists “Siju Puthanveettil” as the registrant of record. Further, Complainant has not authorized Respondent’s use of the mark. As Respondent has failed to submit evidence to the contrary, the Panel determines there is no basis to find Respondent commonly known by the disputed <lycaradio.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Further, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant asserts Respondent’s disputed domain name has resolved to a website featuring a variety of affiliate links, which Complainant argues is indicative that Respondent was seeking commercial gain through sponsored links and advertising. The Panel notes that the disputed domain name resolves to a parked website featuring links such as, “Watch Free Movies Now,” “Dinoko Rock Drill Equip,” and “VW Polo Insurance,” which are unrelated to Complainant. See Compl., at Attached Ex. 12. Prior panels have found that such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Thus, the Panel finds Respondent lacks rights or legitimate interests in respect of the domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The Panel recalls that the <lycaradio.com> domain name resolved to a page featuring affiliate links, which Complainant contends is presumably for commercial purposes. See Compl., at Attached Ex. 12. Prior panels have found bad faith registration and use where the respondent is using the disputed domain name to promote unrelated hyperlinks, likely for commercial gain. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel agrees that Respondent’s alleged use indicates that Respondent seeks commercial gain through a likelihood of confusion with Complainant’s mark, and thus demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant claims that Respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Complainant’s media arm. See Compl., at Attached Ex. 11. Accordingly, Complainant claims Respondent’s February 5, 2014 registration of the disputed domain name is suspect. Complainant adds that it is a common practice of cybersquatters to monitor the media for announcements of mergers and acquisitions, and register the speculated new name of the business to disrupt a complainant’s business. Prior panels have determined that such conduct falls within the Policy ¶ 4(a)(iii) catch-all provision as opportunistic bad faith. To illustrate, in 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005), the panel wrote, “Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.” See also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). As the Panel agrees that the present circumstances indicate Respondent has engaged in opportunistic bad faith, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that its trademark registrations for the LYCA mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has actual and/or constructive knowledge of Complainant’s famous mark at the time of domain name registration, which further supports a finding of bad faith registration. Although previous panels have declined to find evidence of bad faith based on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. Complainant here asserts that Respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the name of the service, and Respondent is a resident in the same country as Complainant’s business. Further, Complainant’s investigation led to a Google street view of Respondent’s address, as provided by the WHOIS record, which shows a London taxi cab outside Respondent’s entrance with a LYCA advertisement on the vehicle. See Compl., at Attached Ex. 18. Based on the circumstances, Complainant asserts it is inconceivable that Respondent would not have been aware of the trademarks of the Complainant, which further supports a finding of bad faith. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel infers that, due to the aforementioned circumstances, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’ LYCA mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lycaradio.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 18, 2015
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