DECISION

 

Irving Materials, Inc. v. Black, Jeff / PartnerVision Ventures

Claim Number: FA1710001753342

 

PARTIES

Complainant is Irving Materials, Inc. (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA.  Respondent is Black, Jeff / PartnerVision Ventures (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <imi.com>, registered with Network Solutions, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 11, 2017; the Forum received payment on October 11, 2017.

 

On October 12, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <imi.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 October 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@imi.com.  Also on October 13, 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 November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant made the following contentions.

Complainant, Irving Materials, Inc., is familiarly known as “IMI” and has federally registered the mark IMI for goods in the construction materials industry, and has made continuous use of its IMI mark in one form or another in the United States since 1965. The IMI mark is famous in its industry and enjoys a reputation in connection with high quality construction materials. Complainant registered the IMI mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,794,396, registered Dec. 16, 2003). See Compl. Annex 1. Aside from the rights derived from its federal registrations, Complainant has acquired a substantial reputation under common law by virtue of its substantially exclusive and continuous use of the IMI mark in its industry for over 50 years. Respondent’s <imi.com> domain name is identical to Complainant’s mark as it merely appends the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated mark.

 

Respondent has no rights or legitimate interests in the <imi.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect Internet users interested in Complainant’s products to a website featuring links to various businesses and commercial organizations. See Compl. Annex 2.

 

Respondent registered and uses the <imi.com> domain name in bad faith. Respondent offers the domain name for sale on the resolving webpage, and claims it will not consider “Offers less than two million dollars.” See Compl. Annex 2. Further, Respondent uses the domain name to trade upon the fame and goodwill of the IMI mark by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site that features links to IMI-named companies, including Complainant. See Compl. Annex 2. Finally, given the fame of the IMI mark in its industry, Respondent was aware of Complainant’s well-known marks and claim of rights thereto.

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a United States company engaged in the provision of goods in the construction materials industry.

2.     Complainant has established it trademark rights in the IMI mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,794,396, registered Dec. 16, 2003).

3.    Complainant has also established common law trademark rights in the IMI mark from or about 1965.

4.    Respondent registered the <imi.com> domain name on March 15, 1994.

5.    Respondent has used the domain name to redirect Internet users interested in Complainant’s products to a website featuring links to various businesses and commercial organizations and has offered the domain name for sale.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it registered the IMI mark with the USPTO (e.g. Reg. No. 2,794,396, registered Dec. 16, 2003). See Compl. Annex 1. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the IMI mark.

 

Complainant also claims it holds common law rights in the IMI mark along with the trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims it has acquired a substantial reputation under common law by virtue of its substantially exclusive and continuous use of the IMI mark in its industry for over 50 years. In support thereof Complainant provides its first use date of the mark on the USPTO registration in 1965. See Compl. Annex 1. The Panel therefore finds that Complainant holds common law rights in the name for the purposes of Policy ¶ 4(a)(i) and that it acquired those rights in or about 1965.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s registered and/or common law marks. Complainant argues that Respondent’s <imi.com> domain name is identical to Complainant’s mark as it merely appends the gTLD “.com” to Complainant’s fully incorporated mark. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4 (a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds that the <imi.com> domain name is identical to the IMI mark under Policy ¶4 (a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

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 (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 (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  trademark and to use it in the disputed domain name;

(b)  Respondent registered the domain name on March 15, 1994;

(c)  Respondent has used the domain name to redirect Internet users interested in Complainant’s products to a website featuring links to various businesses and commercial organizations and has offered the domain name for sale;

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

(e)  Complainant contends that Respondent has no rights or legitimate interests in the <imi.com> domain name as Respondent is not commonly known by the domain name.  Where a response is lacking, relevant information on this issue includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Black, Jeff / PartnerVision Ventures” as the registrant. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the IMI mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <imi.com> domain name under Policy ¶ 4(c)(ii);

(f)   Complainant also argues that Respondent uses the disputed domain name to resolve to a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to benefit commercially from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the website to which the domain name resolves, which contains links to various websites associated with the IMI mark and provides descriptions of the content located on the individual website. See Compl. Annex 2. Accordingly, the Panel finds that Respondent displays competing hyperlinks, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

 

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.

 

Registration and Use in Bad Faith

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 claims that Respondent offers the <imi.com> domain name for sale directly on the website. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). On the resolving webpage, Respondent prominently displays the message “Domain Names imi.com & imi.info are for sale!” followed by the note “Offers less than two million dollars will not be considered.” See Compl. Annex 2. Accordingly, the Panel finds Respondent’s offering of the domain name for sale to the general public as evidence of bad faith registration.

 

Secondly, Complainant argues that Respondent registered and uses the <imi.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to benefit commercially by offering competing goods or services. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant’s screenshot confirms this submission, as the domain name contains various IMI related links and descriptions of the content located at the linked webpage. See Compl. Annex 2. Accordingly, the Panel finds that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s IMI mark. Actual knowledge can adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the IMI mark given the fame of the IMI mark in its industry. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark at the time of registering the <imi.com> domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

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 IMI mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <imi.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  November 7, 2017

 

 

 

 

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