URS Corporation v. URS/Greiner, Inc. c/o Domain Administrator
Claim Number: FA0606000741774
Complainant is URS Corporation (“Complainant”), represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111. Respondent is URS/Greiner, Inc. c/o Domain Administrator (“Respondent”), 7650 West Courtney Campbell, Causeway, Tampa, FL 33607.
The domain name at issue is <urscorporation.com>, registered with Nameview, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On June 29, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <urscorporation.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 July 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 25, 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@urscorporation.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 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <urscorporation.com> domain name is confusingly similar to Complainant’s URS mark.
2. Respondent does not have any rights or legitimate interests in the <urscorporation.com> domain name.
3. Respondent registered and used the <urscorporation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, URS Corporation, is a global engineering design firm catering particularly to the construction services and defense markets. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for its URS mark (Reg. No. 1,379,575 issued January 21, 1986). Complainant provides large and complex engineering projects to its customers as well as providing a comprehensive range of design, systems engineering and technical assistance, program and construction management, and operations and maintenance services. Complainant has registered the <urscorp.com> domain name in order to operate its website which offers detailed information about Complainant’s engineering goods and services to Internet users.
Respondent registered the <urscorporation.com> domain name on November 15, 2001. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring a generic Internet search engine, and advertisements for and links to third-party websites offering engineering related goods and services in direct competition with Complainant. Further, when Internet users are redirected to Respondent’s website they find themselves confronted with numerous pop-up advertisements that make it difficult for Internet users to close out and leave Respondent’s website. Additionally, after this Complaint was filed, Respondent changed its WHOIS registration information to reflect Complainant’s genuine domain name registration information.
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.
Complainant has established rights in the URS mark through
registration with the USPTO. The Panel
finds that registration of a mark with the USPTO is evidence of Complainant’s
rights in the mark sufficient to satisfy Policy ¶ 4(a)(i). 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 [or] have
acquired secondary meaning.”); see also 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.”).
Respondent’s <urscorporation.com>
domain name is confusingly similar to Complainant’s URS mark. Respondent’s domain name includes
Complainant’s mark in its entirety, adding the descriptive term
“corporation.” The term “corporation”
clearly refers to Complainant’s business, especially since Complainant itself
frequently uses the term in connection with its mark. The Panel finds that Respondent’s domain name including Complainant’s
mark in its entirety combined with a term describing Complainant’s business is
confusingly similar to Complainant’s mark as outlined in Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v.
ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name
wholly incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see
also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO
Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <urscorporation.com> domain name. Complainant’s assertion constitutes a prima facie case and shifts the burden to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Respondent’s failure to submit a response may be seen by the Panel as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See 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).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence in order to determine whether Respondent has rights or legitimate interests as outlined in Policy ¶ 4(c).
Respondent is using the <urscorporation.com> domain name, which is confusingly similar to Complainant’s URS mark, to redirect Internet users to Respondent’s website. Respondent’s website includes a generic Internet search engine and advertisements for and links to third-party websites offering engineering goods and services in direct competition with Complainant. Presumably, Respondent receives pay-per-click referral fees from the search engine and the various links. Additionally, Respondent’s website generates numerous pop-up advertisements that make it difficult for Internet users to navigate away from Respondent’s website. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). SeeWells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant asserts that Respondent is not commonly known by
the <urscorporation.com> domain name. While Respondent’s WHOIS information identifies Respondent as
“URS/Greiner, Inc.,” that identity is misleading. Complainant contends that Respondent changed its domain name
registration information after this Complaint was filed to reflect
Complainant’s domain name registration information. Complainant further asserts that Respondent is not in any way
sponsored by or affiliated with Complainant and Respondent does not have
permission or authorization from Complainant to use Complainant’s mark in a
domain name. Complainant’s assertions
have not been refuted, and lacking concrete evidence to the contrary the Panel
finds that Respondent is not commonly known by the disputed domain name and
lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Nature’s Path Foods Inc. v. Natures
Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact
information, Respondent lists its name and its administrative contact as
‘Natures Path, Inc.’ However, since
Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was commonly
known by the disputed domain name prior to its registration of the domain
name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <urscorporation.com> domain
name to redirect Internet users to Respondent’s website which is populated with
advertisements for and links to third-party websites offering engineering goods
and services in direct competition with Complainant. Not only does Respondent’s website direct Internet users to
direct competitors of Complainant through links to competing third-party
websites, it also frustrates Internet users attempts to reach Complainant’s
genuine website by generating numerous pop-up advertisements. The Panel finds that Respondent’s use of the
<urscorporation.com> domain name to operate Respondent’s website
promoting Complainant’s competitors, and making it difficult for Internet users
to reach Complainant’s genuine website disrupts Complainant’s business and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the
respondent’s sites pass users through to the respondent’s competing business).
Respondent’s <urscorporation.com>
domain name is confusingly similar to Complainant’s URS mark, including
Complainant’s mark in its entirety and adding the descriptive term
“corporation.” Because the disputed
domain name includes Complainant’s mark in conjunction with a term frequently
used by Complainant with its mark, it is very likely that Internet users
seeking Complainant’s website might find themselves redirected to Respondent’s
website either by typing the combination of Complainant’s mark and the term
“corporation” directly into their web browser, or by using the mark and term in
combination in an Internet search.
Because of the confusing similarity, once Internet users are redirected
to Respondent’s website they may mistakenly believe that Respondent’s website
is sponsored by or affiliated with Complainant. Respondent is presumably profiting from this confusion by earning
pay-per-click fees from the advertisements and links to third-party websites on
Respondent’s website. The Panel finds
that Respondent’s use of a confusingly similar domain name to attract Internet
users to its website in order to generate profits from referral fees is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
The Panel is not limited to the circumstances outlined in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith. The circumstance of Policy ¶ 4(b) are meant to illustrative, but they are set forth without explicit limitation allowing the Panel the discretion to find other evidence of bad faith registration and use. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Internet users redirected to Respondent’s <urscorporation.com>
domain name, are met by pop-up advertisements so numerous that it is
difficult to close out all of the ads and leave Respondent’s website. This type of use is known as “mousetrapping”
and the Panel finds that such use is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(i). See Worldwinner.com, Inc. v. Cupcake Patrol, FA
175289 (Nat. Arb. Forum Sept. 22, 2003) (equating the practice of
“mousetrapping” to bad faith registration and use
because mousetrapping serves no useful purpose and is inherently
deceptive); see also De La Rue
Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct.
27, 2003) (“In the past, Panels have determined that mousetrapping by itself is
a prima facie showing of bad faith use and registration.”).
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 <urscorporation.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 8, 2006
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