National Notary Association v. Robert Fiore / National Signing Source, LLC
Claim Number: FA1708001746027
Complainant is National Notary Association (“Complainant”), represented by Katherine Bond of Cislo & Thomas, LLP, California, USA. Respondent is Robert Fiore / National Signing Source, LLC (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalnotaryofamerica.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2017; the Forum received payment on August 24, 2017.
On Aug 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalnotaryofamerica.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 August 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2017 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@nationalnotaryofamerica.com. Also on August 29, 2017, 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 September 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
A. Complainant
Complainant, National Notary Association, is a nonprofit professional organization which serves over 4.8 million U.S. notaries. Complainant uses the NATIONAL NOTARY and related marks to identify and promote its business and services, and has rights in the mark by virtue of multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,155,795, registered Oct. 17, 2006). Respondent’s <nationalnotaryofamerica.com> is confusingly similar to Complainant’s mark as the disputed domain name comprises the mark and the generic term “America.”
Respondent has no rights or legitimate interests in the <nationalnotaryofAmerica.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the NATIONAL NOTARY mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website which purports to provide information about being a notary and sell notary supplies, in direct competition with Complainant’s business.
Respondent has registered and used the disputed domain name in bad faith. Respondent registered and is using the disputed domain name in an attempt to cause confusion among members of the relevant public and trade on the goodwill associated with Complainant and the NATIONAL NOTARY mark. Respondent furthers this confusion by attempting to pass off as Complainant.
B. Respondent
Respondent's has failed to submit a Response in this proceeding. The Panel notes this disputed domain name was created January 30, 2017.
C. Additional Submission
Complainant provided a timely additional written statement in which Complainant provides information regarding a co-pending federal court action.
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(f), 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 (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 claims rights in the NATIONAL NOTARY mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,155,795, registered Oct. 17, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the NATIONAL NOTARY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <nationalnotaryofamerica.com> domain name is confusingly similar to Complainant’s NATIONAL NOTARY mark, as the disputed domain name contains the mark in its entirety and merely adds the word “america.” The Panel notes that the disputed domain name also appends the word “of”. Addition of generic words or phrases is not enough to distinguish a resulting domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain.) The Panel therefore finds the disputed domain name to be confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <nationalnotaryofamerica.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the NATIONAL NOTARY mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Robert Fiore / National Signing Source, LLC.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. The Panel therefore finds under Policy ¶4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <nationalnotaryofamerica.com> is evinced by Respondent’s failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website confusingly identifying itself as “National Notary of America” and purports to provide information about being a notary and offering for sale notary supplies. Use of a disputed domain name to pass off as a complainant and compete with a business is not a use which evinces rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc., FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorized audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off…. As such, the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use). The Panel therefore finds Respondent to lack rights and legitimate interest under Policy ¶¶ 4(c)(i) and (iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent’s registration and use of <nationalnotaryofamerica.com> to cause confusion, mistake, and deception among the public to attract them to a competing website evinces Respondent’s bad faith. Use of a disputed domain name to confuse and attract internet users to a competing website for commercial gain can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services, in competition with Complainant.”). Complainant has provided uncontroverted evidence that the website resolving from the disputed domain name purports to offer information about being a notary and regarding the sale of notary supplies. The Panel therefore finds Respondent to have acted in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant has thus also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalnotaryofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 3, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page