National Holistic Institute v. Asia
Ventures, Inc.
Claim
Number: FA0503000433854
Complainant is National Holistic Institute (“Complainant”),
represented by Loretta S. Sifuentes, 11009 Darby Avenue, Northridge, CA
91326. Respondent is Asia Ventures, Inc. (“Respondent”), GPO
11136, Central HK, China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nationalholisticinstitute.com>,
registered with The Registry At Info Avenue d/b/a IA Registry.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 4, 2005.
On
March 2, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain name <nationalholisticinstitute.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue
d/b/a IA Registry has verified that Respondent is bound by the The Registry At
Info Avenue d/b/a IA Registry registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
March 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 28, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@nationalholisticinstitute.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <nationalholisticinstitute.com>
domain name is identical to Complainant’s NATIONAL HOLISTIC INSTITUTE mark.
2. Respondent does not have any rights or
legitimate interests in the <nationalholisticinstitute.com> domain
name.
3. Respondent registered and used the <nationalholisticinstitute.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
has used the NATIONAL HOLISTIC INSTITUTE mark in connection with vocational
training services since May 19, 1981.
Complainant holds an incontestable trademark registration on the
Principal Register of the U.S. Patent and Trademark Office for the NATIONAL
HOLISTIC INSTITUTE mark (Reg. No. 2,013,316, issued November 5, 1996).
Respondent
registered the <nationalholisticinstitute.com> domain name on
January 10, 2002. The domain name
resolves to a website that offers sponsored links to various commercial
websites, including websites that offer services that compete with
Complainant. Respondent is not a
licensee or authorized user of Complainant’s mark.
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."
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.
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.
Complainant has
established that it has rights in the NATIONAL HOLISTIC INSTITUTE mark through
registration with the U.S. Patent and Trademark Office and through continuous
use of the mark in commerce since 1981.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.)
The <nationalholisticinstitute.com>
domain name is identical to Complainant’s NATIONAL HOLISTIC INSTITUTE
registered trademark because the disputed domain name merely removes spaces
form the mark and adds the “.com” generic top-level domain to the mark. The removal of spaces and the addition of
the generic top-level domain do not distinguish the domain name from the
mark. Thus, the Panel finds that the
domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a response in this proceeding. In the absence of a response, the Panel accepts as true all
reasonable allegations contained in the Complaint unless clearly contradicted
by the evidence. Complainant has
alleged that Respondent lacks rights and legitimate interests in the <nationalholisticinstitute.com>
domain name. Complainant’s submission
has gone unopposed and its arguments unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain
name. 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 Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or making a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) because the
domain name is confusingly similar to Complainant’s mark and redirects
unsuspecting Internet users to a commercial website that links to websites that
offer competing services and to websites that are unrelated to Complainant’s
business. Respondent makes
opportunistic use of Complainant’s mark in order to capitalize on the goodwill
associated with the NATIONAL HOLISTIC INSTITUTE moniker. Thus, Respondent fails to establish rights
or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark).
No evidence
before the Panel suggests that Respondent is commonly known by the <nationalholisticinstitute.com>
domain name under Policy ¶ 4(c)(ii).
The domain name’s WHOIS information indicates that the registrant of the
disputed domain name is known as “Asia Ventures, Inc.” and is not known by the
second-level domain that infringes on Complainant’s NATIONAL HOLISTIC INSTITUTE
mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. Thus, Respondent lacks rights and legitimate
interests in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
a domain name that is identical to Complainant’s NATIONAL HOLISTIC INSTITUTE
mark to ensnare unsuspecting Internet users.
Respondent then redirects the users to a website that provides
pay-per-click links to various commercial websites. The Panel infers that Respondent profits from this
diversion. Thus, Respondent is
profiting from the unauthorized use of Complainant’s registered mark in its
domain name. Such infringement is
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is identical to Complainant’s mark for
the purpose of offering services that compete with Complainant in addition to
unrelated services. Respondent’s use of
the <nationalholisticinstitute.com> domain name establishes that
Respondent registered and used the domain name for the purpose of disrupting
the business of a competitor, which is evidence of bad faith pursuant to Policy
¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that, in determining if a domain name has been registered in bad
faith, the Panel must look at the “totality of circumstances”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”).
Respondent’s
registration of the disputed domain name, which is identical to Complainant’s
mark, suggests Respondent knew of Complainant’s rights in the NATIONAL HOLISTIC
INSTITUTE mark. Additionally,
Complainant’s trademark registration on the Principal Register of the U.S.
Patent and Trademark Office gave Respondent constructive notice of
Complainant’s mark. Moreover, the fact
that Respondent’s website links to websites that offer services of
Complainant’s competitors evidences Respondent’s knowledge of Complainant’s
rights in the mark. Thus, the Panel
finds that Respondent chose the <nationalholisticinstitute.com>
domain name based on the distinctive qualities of Complainant’s mark, which
evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that, because the link between Complainant’s mark and
the content advertised on Respondent’s website was obvious, Respondent “must
have known about the Complainant’s mark when it registered the subject domain
name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <nationalholisticinstitute.com> domain name be
TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
April 12, 2005
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