Novasol A/S v. Norsk Feriebolig / novasolapartments / Tony Abboud / Novasol apartments
Claim Number: FA1506001624356
Complainant is Novasol A/S (“Complainant”), represented by Susan L. Crane, New Jersey, USA. Respondent is Norsk Feriebolig / novasolapartments / Tony Abboud / Novasol apartments (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <novasol.website>, registered with NameCheap, Inc. and <novasolapartments.com>, registered with Melbourne IT Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2015; the Forum received payment on June 15, 2015.
On June 18, 2015, NameCheap, Inc. confirmed by e-mail to the Forum that the <novasol.website> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 18, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <novasolapartments.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 June 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@novasol.website, postmaster@novasolapartments.com. Also on June 22, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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(s) be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant is a Denmark company that uses its NOVASOL mark in conjunction with providing holiday rental homes, cottages and apartments. Complainant has rights in the NOVASOL mark through its registration with various trademark organizations, including the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 8,993,289, registered on October 14, 2010). Respondent’s <novasol.website> is identical to the NOVASOL mark because it is differentiated by only the addition of the top-level domain (“TLD”) “.website.” Respondent’s <novasolapartments.com> is confusingly similar to the NOVASOL mark because it is differentiated by only the addition of the generic or descriptive term “apartments” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <novasol.website> and <novasolapartments.com> domain names, despite the fact that Respondent appears to be doing business as “Novasol Apartments Ltd.” Complainant argues that its continuous business operations, including operation in Norway, Respondent’s country of operation, combined with Respondent’s having registered the disputed domain names within this year, show that Respondent chose the names to capitalize on the goodwill of Complainant. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving websites to provide holiday rental services, in direct competition with Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the disputed domain names in bad faith because it uses the resolving websites to compete directly with Complainant in providing holiday rental services. In addition, Respondent registered the disputed domain names with constructive or actual knowledge in Complainant’s rights in the NOVASOL mark, as evidenced by Complainant’s extensive use of the mark in Norway, along with Respondent’s use of the resolving websites, and the fact that Complainant had already registered the <novasol.com> domain name prior to the registration of either disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Novasol A/S of Denmark. Complaint is the owner of various international registrations for the mark NOVASOL which it has continuously used since at least as early as 1991 in connection with its provision of goods and services in the vacation rental business.
Respondent is Norsk Feriebolig / novasolapartments / Tony Abboud / Novasol apartments of Oslo, Norway. Respondent’s registrar’s addresses are listed as Los Angeles, CA, USA and Melbourne, Australia. The Panel notes that the <novasol.website> domain name was created on or about February 20, 2015 and the <novasolapartments.com> domain name was created on or about January 27, 2015.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain name(s) at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondents are one and the same because they operate under the same organization, thereby making the disputed domain names under the control of a single entity. Both Respondents have provided the same contact address and Registrant Organization in the available WHOIS information. The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
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 is a Denmark company who uses its NOVASOL mark in conjunction with holiday rentals for homes, cottages and apartments. Complainant alleges it has rights in the NOVASOL mark through its registration with the OHIM (e.g., Reg. No. 8,993,289, registered on October 14, 2010). Complainant has provided documentation of this registration, along with other international trademark registrations, including in Norway, Respondent’s country of operation. Past panels have found that registration with the OHIM suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the NOVASOL mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <novasol.website> domain name is identical to Complainant’s NOVASOL mark because it is differentiated by only the addition of the TLD “.website.” Complainant also alleges that Respondent’s <novasolapartments.com> domain name is confusingly similar to Complainant’s NOVASOL mark because it is differentiated by only the addition of the term “apartments” and the gTLD “.com.” Previous panels have found that TLDs are irrelevant to Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Complainant argues that because it rents out apartments as part of its business operations, the term “apartments” is either generic or descriptive of its own business operations. Prior panels have found that a generic or descriptive term is not enough to remove a domain name from the realm of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <novasol.website> domain name is identical to Complainant’s NOVASOL mark and that Respondent’s <novasolapartments.com> domain name is confusingly similar to Complainant’s NOVASOL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the <novasol.website> and <novasolapartments.com> domain names, despite the fact that Respondent appears to be doing business as “Novasol Apartments Ltd.” Complainant argues that its continuous business operations, including operation in Norway, Respondent’s county of operation, combined with Respondent’s having registered the disputed domain names within the current year, show that Respondent chose the names to capitalize on the goodwill of Complainant. The Panel notes that Norsk Feriebolig / novasolapartments / Tony Abboud / Novasol apartments of Oslo, Norway is listed as the registrant of record for the disputed domain name. Because Respondent has provided no evidence in this matter Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to provide holiday rental services, in direct competition with Complainant. Past panels have found competing use to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent provides information that competes with Complainant, and thus Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent uses the <novasol.website> and <novasolapartments.com> domain names for the purpose of disrupting Complainant’s business operations by using the resolving websites to compete directly with Complainant in providing holiday rental services. Previous panels have found that competitive use constitutes disruption under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). The Panel here finds such use here, and therefore that Respondent uses the <novasol.website> and <novasolapartments.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <novasol.website> and <novasolapartments.com> domain names to compete directly with Complainant in providing holiday rental services. Prior panels have found competitive use on a confusingly similar domain name to constitute bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel here finds such behavior by Respondent here support a finding that Respondent registered and uses the <novasol.website> and <novasolapartments.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <novasol.website> and <novasolapartments.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 28, 2015
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