Nivel Parts & Manufacturing Co., LLC v. Brian Brin / Golf Car Discounters Inc.
Claim Number: FA1405001557545
Complainant is Nivel Parts & Manufacturing Co., LLC (“Complainant”), represented by Joel Weiss of Weiss & Arons LLP, New York, USA. Respondent is Brian Brin / Golf Car Discounters Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nivelpart.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2014; the National Arbitration Forum received payment on May 5, 2014.
On May 5, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nivelpart.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nivelpart.com. Also on May 8, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant asserts trademark rights in NIVEL and alleges that the disputed domain name is confusingly similar to that trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
No Response was received by the Forum.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a wholesale supplier of golf cart parts and accessories and the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,487,732, registered February 25, 2014 for the word mark, NIVEL;
2. the disputed domain name was registered on November 7, 2011 and resolves to a website at www.golfcardiscounter.com, which offers golf cart parts and accessories;
3. Complainant admits that it has a long-standing relationship with Respondent, a distributor of Complainant’s NIVEL marked goods and of other similar golf cart parts and accessories made by competitors in business to Complainant;
4. Complainant solicited transfer of the disputed domain name in exchange for which it offered Respondent $500 in credit towards future orders of Complainant’s goods; and
5. the matter was not resolved to Complainant’s satisfaction.
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."
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.
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 answer allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under paragraph 4(a)(i) of the Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Since Complainant provides evidence of its registration with the USPTO, Panel is satisfied that Complainant has trademark rights in the term NIVEL.
Panel notes here that whilst registration of the disputed domain name predates registration (but not use) of Complainant’s trademark, it is established by earlier UDRP decisions that first registration is immaterial to proof of trade mark rights under this part of the Policy (see AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) albeit that such timing may prevent a finding of bad faith under Policy ¶ 4(a)(iii)).
Panel also finds that the disputed domain name is confusingly similar to the trademark since, for the purposes of comparison, the gTLD, “.com”, can be ignored and, within the context of Complainant’s business under the trademark, the added word “part” is purely descriptive and of no source distinguishing value (see 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; Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding <amextravel.com> confusingly similar to AMEX; Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to WESTFIELD; Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) finding <duracellbatteries.com> confusingly similar to DURACELL).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Brian Brin / Golf Car Discounters”. This does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and indeed these proceedings have sprung from Complainant’s objection that Respondent lacks permission to use the trademark as part of a domain name.
There is no clear evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. On the contrary, Complainant provides evidence that the domain name directs Internet users to a website controlled by Respondent where parts for golf carts made by Complainant and by Complainant’s competitors in business are offered for sale. Complainant admits that Respondent is an authorized re-seller of its goods but objects that Respondent’s use of the domain name does not conform to the requirements of legitimate use set out in the leading decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, which, rather coincidentally, involved the disputed domain name, <okidataparts.com>[i].
Panel has reviewed the evidence of Respondent’s use of the domain name provided with the Complaint and is in agreement with Complainant’s submission that the use is not protected by any of the scenarios described by paragraph 4(c) of the Policy.
Panel finds that Complainant has established a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that burden has not been discharged and Panel finds that Respondent has no rights or interests. Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant urges that Respondent is using the disputed domain name with the intent to disrupt Complainant’s business pursuant to subparagraph 4(b)(iii). Whilst it could be questioned whether the relationship between the parties is that of competitors, it is certainly the case that the likely outcome of Respondent’s action has been to disrupt Complainant’s business in some manner by diverting those Internet users seeking Complainant to a website unconnected with Complainant. Respondent must have known that was a likely outcome of its actions and Panel finds that diversionary intention to have been Respondent’s primary intention at the time of registration.
Panel finds that Respondent registered the domain name in bad faith. Complainant has established the third and final aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nivelpart.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 13, 2014
[i] That case recognizing that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark.
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