NYSARC, Inc.,
Claim Number: FA0705000987024
Complainant is NYSARC, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ahrcnyc.com>, registered with Network Solutions, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 17, 2007.
On May 16, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <ahrcnyc.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@ahrcnyc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <ahrcnyc.com> domain name is identical to Complainant’s AHRCNYC mark.
2. Respondent does not have any rights or legitimate interests in the <ahrcnyc.com> domain name.
3. Respondent registered and used the <ahrcnyc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NYSARC, Inc., New York City Chapter, is a
Respondent registered the <ahrcnyc.com> domain name in January 2007. Respondent’s domain name resolves to a website displaying adult-oriented content, completely unrelated to Complainant’s business. Complainant alleges that the disputed domain name previously resolved to its own website at the <ahrcnyc.org> domain name.
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 is not required to own a trademark registration to establish rights in the AHRCNYC mark under 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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant has established common law rights in the AHRCNYC
mark through continuous and extensive use of the mark in connection with its
non-profit organization for over 30 years.
Complainant is one of the oldest and largest providers of services to
the disabled in
The Panel finds that Respondent’s <ahrcnyc.com> domain name is identical to Complainant’s AHRCNYC mark under Policy ¶ 4(a)(i). Further, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant as a top-level domain is required of all domain names. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <ahrcnyc.com> domain name. Under Policy ¶ 4(a)(ii), once Complainant initially makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel in this case finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii).
Respondent’s failure to respond to the Complaint indicates that it lacks the required rights or legitimate interests sufficient to satisfy Policy ¶ 4(a)(ii). 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”). However, the Panel will examine the record to further determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate that
Respondent is commonly known by the <ahrcnyc.com>
domain name and there is no other information in the record to suggest that
Respondent is known by this domain name.
Furthermore, Respondent is not authorized by Complainant in any way to
use the AHRCNYC mark. The Panel therefore finds that Respondent is not commonly
known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent’s <ahrcnyc.com> domain name, which is identical to
Complainant’s AHRCNYC mark, resolves to an adult-oriented website and
Respondent presumably incurs some commercial benefit from the site. The Panel finds that this 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 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)); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that
the respondent did not use a domain name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the domain name to divert Internet users seeking
the complainant's goods or services to pornographic material and links, while
presumably earning a commission or referral fees from advertisers).
Moreover, Complainant’s prior
registration of the <ahrcnyc.com>
domain name and Respondent’s registration of the <ahrcnyc.com> domain name
soon after Complainant inadvertently allowed its registration to lapse also
indicates that Respondent lacks rights or legitimate interests in the disputed
domain name. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041
(Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the
domain name, coupled with Respondent’s failure to respond to this dispute, is
evidence that Respondent has no rights or legitimate interests in the domain
name pursuant to Policy 4(a)(ii).”); see
also Clark v. HiNet, Inc.,
FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked
rights and legitimate interests in the domain name because it failed to respond
to the complaint and it “opportunistically” registered the domain name when the
complainant inadvertently allowed the registration to lapse).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using the <ahrcnyc.com> domain name to divert Internet users to a website containing adult-oriented content and is presumably benefiting commercially from the website. The Panel infers that Respondent is profiting from the likelihood of confusion with Complainant’s AHRCNYC mark to direct Internet users to its site. Therefore, Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also 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.”).
Furthermore, Respondent’s registration of the <ahrcnyc.com> domain name shortly after Complainant inadvertently allowed its registration of the <ahrcnyc.com> domain name to lapse indicates that Respondent registered and is using the disputed domain name in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
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 <ahrcnyc.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 26, 2007
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