Window and Door Manufacturers Association v. Alexander Morozov
Claim Number: FA0609000809777
Complainant is Window and Door Manufacturers Association (“Complainant”), represented by Marshall J. Brown, of Foley & Lardner LLP, 321 North Clark Street, Suite 2800, Chicago, IL 60610-4764. Respondent is Alexander Morozov (“Respondent”), 555 8-th Ave #1001, New York, NY 10018.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nwwda.org>, registered with Network Solutions LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2006.
On October 2, 2006, Network Solutions LLC confirmed by e-mail to the National Arbitration Forum that the <nwwda.org> domain name is registered with Network Solutions LLC and that Respondent is the current registrant of the name. Network Solutions LLC has verified that Respondent is bound by the Network Solutions 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 October 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@nwwda.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <nwwda.org> domain name is identical to Complainant’s NWWDA mark.
2. Respondent does not have any rights or legitimate interests in the <nwwda.org> domain name.
3. Respondent registered and used the <nwwda.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Window and Door Manufacturers Association, has continuously used the NWWDA mark in connection with its trade association services that promote the interests of the window and door manufacturers industry since 1985. In connections with its services, Complainant has spent significant sums of resources for the promotion of its NWWDA mark. Complainant has significantly evidenced its longstanding continuous use of the NWWDA mark in its Complaint. Complainant’s mark has been featured in numerous publications and advertisements.
Respondent registered the <nwwda.org> domain name on October 2, 1995. The disputed domain name automatically redirects Internet users to the <nwwda.com> domain name that resolves to a website that displays adult-oriented content.
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 continuously and extensively used the NWWDA mark since 1985. For the limited purposes of Policy ¶ 4(a)(i), the Panel finds that Complainant has generated sufficient consumer goodwill and secondary meaning to establish common law rights in the NWWDA mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy). Cf. Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
Complainant contends that the <nwwda.org> domain name is identical to its common law NWWDA mark. The disputed domain name contains Complainant’s NWWDA mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.org.” It is well-established under Policy ¶ 4(a)(i), that the mere addition of a gTLD, such as “.org,” does nothing to distinguish a domain name from the unmodified mark that it contains. Accordingly, the Panel finds the disputed domain name to be identical to Complainant’s common law NWWDA mark. See Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to the complainant’s well-known and registered BMW trademarks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant, in accordance with Policy ¶ 4(a)(ii), must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name before the burden shifts to Respondent. If Complainant successfully shifts the burden, Respondent must come forth with evidence to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). The Panel finds that Complainant has successfully established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name through its uncontested assertions and evidentiary submissions.
Respondent’s failure to submit a Response in this proceeding
creates a presumption that Complainant lacks right and legitimate interests in
the disputed domain name. See 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); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names). The
Panel, however, chooses to analyze the record to determine if Respondent has
rights or legitimate interests in the disputed domain name.
According to the WHOIS registry, the disputed domain name
was registered by Alexander Morozov of Herndon, Virginia. Because Respondent has failed to come
forward with any evidence to show that it is commonly known by the disputed
domain name, the Panel finds that Respondent has not satisfied the requirements
of Policy ¶ 4(c)(ii). See 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.”); see also 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”).
Additionally, the
disputed domain name automatically redirects Internet users to the
<nwwda.com> domain name that resolves to a website that displays adult
oriented content. The use of a domain name
that is identical to the mark in which a third-party has rights to redirect
Internet users to an adult-oriented website does not amount to 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). 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, containing images of scantily clad
women in provocative poses, did not constitute a connection with a bona fide
offering of goods or services or a noncommercial or fair use); see also Dipaolo v. Genero, FA
203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to pornography is not a bona
fide offering of goods or services or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the use of a domain name that is identical to a mark in which Complainant has rights to redirect to an adult-oriented website evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
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 <nwwda.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 14, 2006
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