NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express
Claim Number: FA1501001602497
Complainant is NAED Education and Research Foundation, Inc. (“Complainant”), represented by Colin Luoma of Carmody MacDonald P.C., Missouri, United States. Respondent is Domain Administrator / Marketing Express (“Respondent”), Grand Cayman, Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naed.com>, registered with Rebel.com Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2015; the Forum received payment on January 29, 2015.
On February 7, 2015, Rebel.com Corp. confirmed by e-mail to the Forum that the <naed.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 February 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2015 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@naed.com. Also on February 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant urges that it serves as a hub of networking, education, and research for electrical distributors. Complainant uses the NAED trademark to distinguish itself, and has registered the NAED mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,817,434, registered January 18, 1994), which demonstrates its rights in the mark. Complainant contends that the <naed.com> domain name is identical to the NAED mark. Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” to the NAED mark is not sufficient to distinguish the disputed domain name from the NAED mark.
2. Complainant asserts that Respondent has no rights or legitimate interests in the <naed.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of the NAED mark, nor has Respondent been given authorization to use the NAED mark. Further, Respondent is making neither a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, Complainant asserts that the disputed domain name is intended to commit cyber-attacks against Internet users with malware.
3. Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. As Respondent is purporting to commit cyber-attacks on Internet users, Complainant argues that Respondent is disrupting its business and operations.
B. Respondent’s Contentions
1. Respondent did not submit a Response.
1. Respondent’s <naed.com> domain name is confusingly similar to Complainant’s NAED mark.
2. Respondent does not have any rights or legitimate interests in the <naed.com> domain name.
3. Respondent registered or used the <naed.com> domain name in bad faith.
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 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.”).
Complainant purports to use the NAED mark to identify its educational services as a not-for-profit organization. Complainant has registered NAED with the USPTO (e.g., Reg. No. 1,817,434, registered January 18, 1994), and claims that such a trademark registration demonstrates its rights in the mark. The Panel agrees that Complainant’s registration of the NAED mark with the USPTO evinces rights in the mark for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <naed.com> domain name is identical to the NAED mark. Complainant urges that the addition of a mere gTLD to its mark is irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (‘gTLD’) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant urges that Respondent has no rights or legitimate interests in the NAED mark. The Panel notes that the WHOIS information for the registrant is simply “Domain Administrator / Marketing Express.” As Respondent has failed to add any evidence for the Panel’s consideration, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Further, Complainant asserts that is has no relationship with Respondent and thus has not given Respondent permission by which it could own or use any domain name registrations which are identical to the NAED mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel agrees that Respondent has no rights or legitimate interests in the NAED mark pursuant to Policy ¶ 4(c)(ii).
Further, Complainant alleges that Respondent is neither making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that the <naed.com>disputed domain name resolves to a page that infiltrates visiting device systems with malware. The Panel notes that Complainant has provided a sworn affidavit in support of this allegation. See Compl., at Attached Ex. 4. Panels have found that using malware in correlation with a disputed domain name to attack visiting Internet users does not confer rights or legitimate interests upon a respondent per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The Panel finds Complainant’s contentions sufficient, and agrees that Respondent’s use of malware is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent’s behavior constitutes bad faith disruption under Policy ¶ 4(a)(iii). The Panel notes that the disputed domain name resolves in an attempt to install malware on the visiting device for the purpose of stealing customer information. See Compl., at Attached Ex. 4. Complainant argues that this use is a detriment to its legitimate business website as it attacks Complainant and its members, partners and customers. The Panel finds this case similar to Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010), in which the panel found that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii).” Accordingly, the Panel finds Respondent’s use of the <naed.com> domain name in connection with malware evinces bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <naed.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 23, 2015
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