Manganaro's Hero Boy, Inc. v. NVen Inc
Claim Number: FA0511000591204
Complainant is Manganaro's Hero Boy, Inc. (“Complainant”), represented by Harold James, of Epstein Drangel Bazerman & James LLP, 60 East 42nd Street, Suite 820, New York, NY 10165. Respondent is NVen INC (“Respondent”), 382, Doryong-dong, Seoul, Seoul, Korea, 516024.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <manganarosheroboy.com>, registered with Onlinenic, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2005.
On November 3, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <manganarosheroboy.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. 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 November 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 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@manganarosheroboy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”), issued in 1991, for the MANGANARO’S HERO BOY mark relating to its Italian restaurant and catering services.
Respondent registered the <manganarosheroboy.com> domain name on May 20, 2005.
Respondent’s <manganarosheroboy.com> domain name is substantively identical or confusingly similar to Complainant’s MANGANARO’S HERO BOY mark.
Respondent is using the disputed domain name to redirect Internet users to an adult-oriented website.
Respondent does not have any rights or legitimate interests in the domain name <manganarosheroboy.com>.
Respondent has registered and is using the <manganarosheroboy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the disputed domain name has been registered and is being used by Respondent 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."
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); 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.”
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 rights in the MANGANARO’S HERO
BOY mark through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004):
“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”
Respondent’s <manganarosheroboy.com> domain name is substantively identical and confusingly similar to Complainant’s MANGANARO’S HERO BOY mark because the domain name incorporates Complainant’s mark in its entirety, and merely omits the spaces and the apostrophe, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the substantive identity and confusing similarity between the mark and the subject domain name pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), finding the domain name <hannoverre.com> to be identical to the mark 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”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding the domain name <wembleystadium.net> identical to the WEMBLEY STADIUM mark); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003): “The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”; see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003): “It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <manganarosheroboy.com> domain name. Once Complainant makes a prima facie showing in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent has failed to respond to the Complaint, the Panel is entitled to and does conclude that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
In addition, Complainant alleges, and Respondent does not deny, that Respondent is using the <manganarosheroboy.com> domain name to redirect Internet users to an adult-oriented website. Respondent’s use of the disputed domain name to divert Internet users to such a website, evidently for profit, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-orientated website did not constitute a bona fide offering of goods or services or a noncommercial or fair use; see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii).
Moreover, Respondent has offered no evidence suggesting that Respondent is commonly known by the <manganarosheroboy.com> domain name. For this additional reason, Respondent has not established rights or legitimate interests in the domain name <manganarosheroboy.com> pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), finding no rights or legitimate interests where the respondent was not commonly known by the mark; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further alleges, without contravention by Respondent, that Respondent has registered and is using the <manganarosheroboy.com> domain name in bad faith by using Complainant’s MANGANARO’S HERO BOY mark to attract Internet users to Respondent’s website. This it does presumably for profit. Respondent’s use of the mark in a domain name that resolves to an adult-oriented website suggests that Respondent has attempted to capitalize on the goodwill associated with the mark by confusing Internet users as to Complainant’s affiliation with Respondent’s website. Such conduct constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003): “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); to the same effect, see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000); and State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000).
Moreover, it is evident that Respondent registered the
contested domain name with actual or constructive knowledge of Complainant’s
rights in the MANGANARO’S HERO BOY mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For each of these reasons, Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <manganarosheroboy.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 22, 2005
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