RN Borelli, Inc. and Borelli Investment Company v. Hyunsook No
Claim Number: FA0705000989803
Complainant is RN Borelli, Inc. and Borelli Investment Company (collectively, “Complainant”), represented by Mark S. Carlquist, 354 N. Santa Cruz Avenue, Suite E, Los Gatos, CA 95030. Respondent is Hyunsook No (“Respondent”), 1991, Songhyeon-dong Dalseo-gu, Daegu 704340, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <borelli.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 24, 2007, a Korean Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 13, 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@borelli.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <borelli.com> domain name is confusingly similar to Complainant’s R.N. BORELLI, INC. mark.
2. Respondent does not have any rights or legitimate interests in the <borelli.com> domain name.
3. Respondent registered and used the <borelli.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, R.N. Borelli, Inc., conducting business under
the business name Borelli Investment Company, is a
Respondent registered the <borelli.com> domain name on
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 effectively establish rights in the R.N. BORELLI, INC. 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
Complainant has established common law rights in the R.N.
BORELLI, INC. mark through continuous and extensive use of the mark in
connection with its commercial real estate development and management business
since its incorporation in 1979.
Complainant is one of the most well-known and respected commercial real
estate firms in Northern and
Respondent’s <borelli.com>
domain name is confusingly similar to Complainant’s R.N. BORELLI, INC. mark
under Policy ¶ 4(a)(i) because it simply deletes the “R.N.” and “INC.”
components of Complainant’s mark, leaving the word “BORELLI” unchanged. Previous panels have held that the deletion of
words or punctuation from a mark does not negate its confusing similarity with
a domain name. The addition of the
generic-top level domain (“gTLD”) “.com” from Complainant’s mark is irrelevant
as a top-level domain is a required element of all domain names. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Mrs. World Pageants,
Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000)
(finding that punctuation is not significant in determining the similarity of a
domain name and mark); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use
of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <borelli.com> domain name. Once Complainant has established a prima facie case, however, 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, 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”); 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).
Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights or legitimate interests in the <borelli.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
There is no evidence in the record, including Respondent’s
WHOIS information, to suggest that Respondent is commonly known by the <borelli.com> domain name. Complainant points out that Respondent is
located in
Respondent’s <borelli.com>
domain name originally resolved to a website containing links to
third-party websites unrelated to Complainant or Complainant’s business. The
Panel presumes that Respondent received click-through fees when consumers used
these links. The disputed domain name now
resolves to a Korean-language website.
The Panel finds that Respondent’s use of the <borelli.com> domain name for commercial gain to redirect
Internet users to unrelated websites does not constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see
also Seiko Kabushiki Kaisha v. CS into
Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”)
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent has registered and is using the <borelli.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain name originally
resolved to a website displaying links to content unrelated to Complainant or
Complainant’s business. As Respondent likely received click-through fees for
each user it redirected to other websites, the Panel finds that Respondent took
advantage of the likelihood of confusion between the source and affiliation of
Respondent’s domain name, the website content, and Complainant’s R.N. BORELLI,
INC. mark. See Bank of Am. Corp. v.
Respondent’s offer to sell the disputed domain name registration to Complainant for $6,000 after Complainant sent a cease and desist letter to Respondent is further evidence of Respondent’s bad faith registration and use of the <borelli.com> domain name under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
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 <borelli.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 29, 2007
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