BannersGoMLM, Inc. v. OK Rivers
Claim Number: FA0704000972424
Complainant is BannersGoMLM, Inc. (“Complainant”), represented by Jeffrey
T. Gray, of Varnum, Riddering,
Schmidt, & Howlett LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <bannersgosmlm.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 4, 2007.
On May 2, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bannersgosmlm.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 May 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 29, 2007 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@bannersgosmlm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <bannersgosmlm.com> domain name is confusingly similar to Complainant’s BANNERSGOMLM.COM mark.
2. Respondent does not have any rights or legitimate interests in the <bannersgosmlm.com> domain name.
3. Respondent registered and used the <bannersgosmlm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BannersGoMLM,
Inc., is an Internet company that provides its customers with an exclusive 1:1
banner exchange program. Complainant has
used its BANNERSGOMLM.COM mark continuously and exclusively for the past seven years in connection with its website
at the <bannersgomlm.com> domain name. Complainant has used its mark in connection
with its services since 2000 to provide its numerous customers a cost-effective
method of distributing advertising banners over the Internet.
Respondent registered the <bannersgosmlm.com> domain name on March 8, 2007. Respondent’s disputed domain name resolves to a website that imitates Complainant’s website in an attempt to obtain personal information from Internet users for Respondent’s own financial benefit.
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.
Registration of a mark with a governmental authority is not necessary to provide Complainant with rights in its mark for the purposes of satisfying Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant may establish rights in the BANNERSGOMLM.COM mark by demonstrating secondary meaning in the mark through continuous and extensive use of the mark. Complainant has used its mark in connection with its banner services through its website since 2000. Complainant has established a business through the <bannersgomlm.com> domain name and has accordingly established its continuous and extensive use of the BANNERSGOMLM.COM mark. Thus, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <bannersgosmlm.com> domain name is
confusingly similar to Complainant’s BANNERSGOMLM.COM
mark under Policy ¶ 4(a)(i) as it contains Complainant’s mark in its entirety
with the addition of the letter “s” in the middle of the mark. Such a misspelling of Complainant’s mark does
not adequately distinguish the disputed domain name from Complainant’s mark
under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that the addition of the letter “c” to the
complainant’s SAFLOK mark does not distinguish the <saflock.com> domain
name from the mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant must demonstrate a prima facie case that Respondent lacks rights and legitimate interests in the <bannersgosmlm.com> domain name. Once the allegations are made, the burden shifts to Respondent to set forth evidence that it does have rights and legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests in the dispute domain name under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <bannersgosmlm.com> domain name and there is no other evidence in the record to indicate that Respondent has ever been known by the disputed domain name. There is also no evidence that Respondent is authorized by Complainant to use Complainant’s mark in connection with the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the <bannersgosmlm.com>
domain name to operate a website that imitates Complainant’s website in its
appearance and content. Such
use of the disputed domain name is presumably for Respondent’s own commercial
benefit through access to personal and financial information of Internet users
attempting to locate Complainant’s website to access Complainant’s Internet
banner services. Such use of
Complainant’s mark 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). See
HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004)
(finding that a domain name that “is confusingly similar to Complainant’s mark,
redirects Internet users to a website that imitates Complainant’s website, and
is used to acquire personal information from Complainant’s potential associates
fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or
(iii)); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <bannersgosmlm.com> domain name to
operate a website that imitates Complainant’s website, presumably for Respondent’s
commercial benefit through the acquisition of personal information from
Internet users attempting to locate Complainant and Complainant’s
services. The disputed domain name and
corresponding website are also capable of creating a likelihood of confusion as
to Complainant’s sponsorship and affiliation with the disputed domain
name. Accordingly, the Panel finds
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See
Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29,
2004) (“The domain name <billing-juno.com> was registered and used in bad
faith by using the name for fraudulent purposes.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum
Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain).
The Panel further finds
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondent is using the <bannersgosmlm.com>
domain name in an attempt to assert itself as Complainant and as offering
Complainant’s banner services. The use
of the disputed domain name by Respondent to pass its website off as
Complainant’s is further evidence of bad faith registration and use under
Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec.
18, 2001) (finding that the respondent's use of <monsantos.com> to
misrepresent itself as the complainant and to provide misleading information
to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding
that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that the complainant endorsed and sponsored the
respondent’s website).
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 <bannersgosmlm.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 5, 2007
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