Solutia Inc. v. VentureSpace Enterprises c/o Matt Bross
Claim Number: FA0606000727709
Complainant is Solutia Inc. (“Complainant”), represented by Ryan M. Kaatz, of Ladas & Parry, Digital Brands Practice, 224 South Michigan Avenue, Suite 1600, Chicago, IL 60604. Respondent is VentureSpace Enterprises c/o Matt Bross (“Respondent”), 1001 W. Kentucky Ave., Tampa, FL 33603.
The domain name at issue is <sourcesolutia.com>, registered with Bulkregister, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 7, 2006.
On June 7, 2006, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <sourcesolutia.com> domain name is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 June 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 2006 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@sourcesolutia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <sourcesolutia.com> domain name is confusingly similar to Complainant’s SOLUTIA mark.
2. Respondent does not have any rights or legitimate interests in the <sourcesolutia.com> domain name.
3. Respondent registered and used the <sourcesolutia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Solutia Inc., is an applied chemistry company that has 35 sites throughout the world. Complainant is an independent company that was created in 1997 from its parent company, Monsanto Company. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) including several for its SOLUTIA mark (Reg. No. 2,379,855 issued August 22, 2000).
Respondent registered the <sourcesolutia.com> domain name on April 23, 2005. Respondent’s disputed domain name resolves to a website that features links to third-party websites, some of which are in direct competition with Complainant. The resulting website also displays links to pop-up advertisements.
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) (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.”).
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.
The Panel finds that Complainant’s federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the SOLUTIA mark. See Innomed Techs., 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.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <sourcesolutia.com> domain name is confusingly similar to Complainant’s SOLUTIA mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark and adds the term “source.” The addition of this term to Complainant’s mark is not enough to negate the confusing similarity between the disputed domain name and Complainant’s mark. In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found that there was confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word or term. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <sourcesolutia.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s SOLUTIA mark, and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The evidence on record indicates that Respondent is using
the disputed domain name to operate a website which displays links to
third-party websites, some of which are in direct competition with
Complainant. The resulting website also
displays links to pop-up advertisements.
The Panel finds that such use of the disputed domain name does not
constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells
Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (holding that the respondent’s use of
“confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name that contains Complainant’s
mark in its entirety. Respondent is
using the <sourcesolutia.com> domain name to redirect Internet
users to a website that features links to third-party websites, some of which
are in direct competition with Complainant.
The Panel finds that such use constitutes disruption and is indicative
of bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing
auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for diverting Internet users to a website offering links to
third-party websites, some of which are in direct competition with Complainant
and some of which display links to pop-up advertisements. Additionally, Respondent’s disputed domain
name that incorporates Complainant’s SOLUTIA mark is capable of creating
confusion as to Complainant’s affiliation with the <sourcesolutia.com>
domain name and resulting website. In Bank
of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003), the panel found that since the disputed domain names contained entire
versions of the complainant’s marks and are used for something completely
unrelated to their descriptive quality, a consumer searching for the
complainant would become confused as to the complainant’s affiliation with the
resulting search engine website and held that the domain names were registered
and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sourcesolutia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 18, 2006
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