New America Network, Inc. v. Angelika Sohn
Claim Number: FA1712001762872
Complainant is New America Network, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Angelika Sohn (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naiboise.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2017; the Forum received payment on December 14, 2017.
On December 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <naiboise.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 December 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 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@naiboise.com. Also on December 18, 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 January 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 operates the single largest global network of owner-operated commercial real estate brokerage firms in the world. Complainant has rights in the NAI mark based upon trademark registrations of the NAI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Re. No. 2,199,582, registered Oct. 27, 1998). Respondent’s <naiboise.com> domain name is confusingly similar to Complainant’s NAI mark because Respondent merely added the geographical term “boise” and a “.com” generic top level domain (“gTLD”) to the fully-incorporated NAI mark.
Respondent has no rights or legitimate interests in the <naiboise.com> domain name because Respondent is not affiliated with Complainant and is not commonly known by the disputed domain name. Additionally, Respondent purports to be Kowallis & Mackey LLC, a group previously affiliated with Complainant, at its disputed domain name, but the Kowallis & Mackey license to use the NAI mark was terminated in 2009.
Respondent’s use of the <naiboise.com> domain name to disrupt Complainant’s business indicates bad faith registration and use. Additionally, Respondent’s WHOIS information is believed to be false due to returned cease and desist letters sent to Respondent’s purported address. Furthermore, Respondent claims to be Complainant’s past affiliate, which indicates Respondent had actual knowledge of Complainant’s rights in the NAI mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <naiboise.com> domain names.
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 to have rights in the NAI mark due to trademark registrations of the mark with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). In this case, Complainant has provided copies of its USPTO registrations for the NAI mark (e.g., Reg. No. 2,199,582, registered Oct. 27, 1998). Therefore, the Panel finds Complainant has sufficiently demonstrated rights in the NAI mark per Policy ¶ 4(a)(i).
Next, Complainant asserts Respondent’s <naiboise.com> domain name is confusingly similar to the NAI mark because Respondent merely adds a geographic term and a gTLD to the fully-incorporated mark. Generally, adding geographic terms and gTLDs are insufficient changes to make the disputed domain name distinct from the incorporated mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Here, Complainant asserts Respondent added the geographic term “boise” and a “.com” gTLD to Complainant’s fully-incorporated NAI mark. The Panel finds Respondent’s <naiboise.com> domain name is confusingly similar to the NAI mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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.”).
Complainant contends Respondent lacks rights or legitimate interests in the <naiboise.com> domain name. Complainant argues Respondent is not associated with Complainant and nothing in the WHOIS record suggests Respondent is commonly known by the disputed domain name. Typically, WHOIS records may be used to indicate whether a respondent is commonly known by the disputed domain name when the respondent fails to respond to UDRP proceedings. See Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum Oct. 17, 2016) (holding that, when a respondent fails to submit additional evidence, the relevant WHOIS record may determine the name by which respondent is commonly known). Here, WHOIS records identify Respondent as “Angelika Sohn.” Therefore, the Panel finds that Respondent is not commonly known by the <naiboise.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent prominently displays the NAI mark and claims to be Complainant’s past affiliate, Kowallis & Mackey, LLC at its <naiboise.com> domain in order to confuse users for commercial gain. Passing off as a complainant or its affiliate does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). As Complainant contends, Respondent’s disputed domain name states to be the website for “NAI Kowallis & Mackey,” and is “an exclusive partner of NAI global real estate service delivery system representing Southern Idaho.” Complainant provided a copy of its termination letter to Kowallis & Mackey, which was sent on August 31, 2009, that ended the Kowallis & Mackey license to use the NAI mark. Therefore, the Panel finds Respondent’s attempts to pass itself off as Complainant’s past affiliate does not constitute a right or legitimate interest in the <naiboise.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts Respondent disrupts Complainant’s business by purporting to offer Complainant and its members’ services at the <naiboise.com> domain name and this indicates bad faith registration and use. Offering competing goods or services to disrupt a complainant’s business may demonstrate bad faith registration and use per Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). As Complainant contends, Respondent’s site offers the same real estate services as Complainant and claims to be a member of Complainant’s network. Therefore, the Panel finds Respondent’s attempts to disrupt Complainant’s business constitutes bad faith per Policy ¶ 4(b)(iii).
Finally, Complainant claims Respondent had actual knowledge of Complainant’s rights in the NAI mark at the time Respondent registered the disputed domain name. Complainant argues Respondent attempts to pass itself off as Complainant’s past affiliate and this indicates actual knowledge of Complainant’s rights in the NAI mark. Actual knowledge may be inferred from the record to demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel finds that Respondent had actual notice of Complainant’s NAI mark and registered and used the mark in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <naiboise.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 17, 2018
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