Federation Iinternationale de l'Automobile v. MARY S. YEAGER
Claim Number: FA1507001627826
Complainant is Federation Iinternationale de l'Automobile (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom. Respondent is MARY S. YEAGER (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fiabrussels.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2015; the Forum received payment on July 8, 2015.
On July 8, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <fiabrussels.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@fiabrussels.com. Also on July 8, 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 August 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 be transferred from Respondent to Complainant.
1. Factual Background:
a. Respondent purchased the <fiabrussels.com> domain name from the Registrar on or about January 28, 2015. See Compl., at Attached Annex 13, pp. 5-10 (history of WHOIS information). While the WHOIS record was subsequently changed to reflect “MARY S. YEAGER” as registrant, it may be affirmed that such a change merely reflects an alias of Respondent. See id.; see also Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005) (“[T]he fact, that the Respondent did not register the disputed domain name itself but acquired it form the previous owner, does not mean that the Respondent has not ‘registered’ the Domain Name within the meaning of the Policy since there is no reason to differentiate between a direct registration and registration after transfer. The domain name at issue was in fact “registered” within the meaning of the Policy when it had been acquired by the Respondent [from a prior registrant].”).
2. Respondent’s Infringing Activities
a. Policy ¶ 4(a)(i)
i. Complainant registered the FIA mark with the United States Patent and Trademark Office (“USPTO”) on December 7, 2010 (Registry No. 3,885,473). Complainant uses the mark in connection with its status as a governing body in the international “Motor Sport” industry. Complainant has demonstrated its rights via its various trademark registrations for the FIA mark.
ii. Respondent’s <fiabrussels.com> domain name is confusingly similar to the FIA mark as it incorporates the mark entirely and merely adds the geographically descriptive term “Brussels,” and the generic top-level domain (“gTLD”) “.com.” Further, “Brussels” adds to the confusing similarity as Complainant’s Attached Annex 11 demonstrates that Complainant has an establishment located in Brussels.
b. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in the <fiabrussels.com> domain name.
ii. Respondent is not commonly known by the disputed domain name, nor has it been authorized or licensed to make any use of the FIA mark in connection with any domain registrations.
iii. Next, Respondent operates businesses which purport to attract Internet consumers via search engine optimization, social media promotions, and interactive marketing. See Compl., at Attached Annex 15, pp. 1-9 (Search Engine Optimisation (SEO)). Such use in intending to generate activity on the resolving website presumably increases revenue potential and thus cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
c. Policy ¶ 4(a)(iii)
i. Respondent’s inclusion of content on the resolving website to the disputed domain name surrounding the automotive industry is designed to divert Internet users to its businesses, for which information is also included. See Compl., at Attached Annex 15. This use demonstrates bad faith disruption under Policy ¶ 4(b)(iii).
ii. Respondent has operated the <fiabrussels.com> domain name to confuse Internet users and to commercially profit from such confusion as Internet users may be redirected to Respondent’s businesses online.
iii. Respondent registered and used the <fiabrussels.com> domain name with actual and/or constructive knowledge of the FIA mark as evidenced by its registering of a confusingly similar domain name, the offerings included on the website, and the notoriety associated with Complainant.
1. Respondent’s <fiabrussels.com> domain name is confusingly similar to Complainant’s FIA mark.
2. Respondent does not have any rights or legitimate interests in the <flabrussels.com> domain name.
3. Respondent registered or used the <fiabrussels.com> 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 alleges it registered the FIA mark with the USPTO on December 7, 2010 (Registry No. 3,885,473), and argues it has thus demonstrated its Policy ¶ 4(a)(i) rights. Panels have agreed where a complainant and respondent live or operate in different countries, such geographic disparity is irrelevant where there is a valid governmental trademark registration. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel assigns Complainant rights under Policy ¶ 4(a)(i).
Moreover, Complainant contends that Respondent’s <fiabrussels.com> domain name is confusingly similar to the FIA mark as it incorporates the mark entirely and merely adds the geographically descriptive term “Brussels,” and the gTLD “.com.” Further, Complainant posits that the addition of the term “Brussels” adds to the confusing similarity as Complainant’s Attached Annex 11 demonstrates that Complainant has an establishment located in Brussels. Panels have resolved that such alterations are not so compelling as to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). Therefore, this Panel agrees that the <fiabrussels.com> domain name is confusingly similar to the FIA mark under 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 has no rights or legitimate interests in the <fiabrussels.com> domain name under any condition of Policy ¶ 4(a)(ii). Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has it been authorized or licensed by Complainant to make any use of the FIA mark in connection with any domain registrations. While Respondent has not submitted evidence which would perhaps support a finding of Policy ¶ 4(c)(ii) in its favor, the Panel may see no reason to award such rights. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Respondent allegedly operates businesses which purport to attract Internet consumers via search engine optimization, social media promotions, and interactive marketing. See Compl., at Attached Annex 15, pp. 1-9 (Search Engine Optimisation (SEO)). Such use in intending to generate activity on the resolving website presumably increases revenue potential and thus cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Complainant. Panels have agreed with such contentions, as did the panel in Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Therefore, this Panel sees that Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) have not been satisfied by Respondent.
Respondent’s inclusion of content on the resolving website to the disputed domain name surrounding the automotive industry is purportedly designed to divert Internet users to its businesses, for which information is also included. See Compl., at Attached Annex 15. The Panel views Complainant’s attached evidence and determine whether this use demonstrates bad faith disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Next, Complainant claims that Respondent has operated the <fiabrussels.com> domain name to confuse Internet users and to commercially profit from such confusion as Internet users may be redirected to Respondent’s businesses online. Panels have found registration of confusingly similar domain names in an attempt to commercially gain from the goodwill associated with a complainant’s mark to be indicative of Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Therefore, this Panel sees that the registration and use of the <fiabrussels.com> domain name by Respondent is evidence of Policy ¶ 4(b)(iv) bad faith.
Complainant urges Respondent registered and used the <fiabrussels.com> domain name with actual and/or constructive knowledge of the FIA mark as evidenced by its registering of a confusingly similar domain name, the offerings included on the website, and the notoriety associated with Complainant. Constructive knowledge has been regarded as irrelevant with respect to arguments of bad faith registration and use, and this Panel disregards such arguments. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel considers arguments of actual knowledge under the Policy, and find that Complainant has supported a valid argument in its Complaint. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fiabrussels.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 13, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page