New America Network, Inc. v. Jones Mickael
Claim Number: FA1502001604524
Complainant is New America Network, Inc. (“Complainant”), represented by Nancy Rubner Frandsen of Baker & Hostetler LLP, Pennsylvania, United States. Respondent is Jones Mickael (“Respondent”), Mickael, France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nai-france.com>, <naifrance.com>, <nai-equation.com>, and <naiequation.com> registered with COREhub, S.R.L.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2015; the Forum received payment on February 11, 2015.
On February 12, 2015, COREhub, S.R.L. confirmed by e-mail to the Forum that the <nai-france.com>, <naifrance.com>, <nai-equation.com>, and <naiequation.com> domain names are registered with COREhub, S.R.L. and that Respondent is the current registrant of the names. COREhub, S.R.L. has verified that Respondent is bound by the COREhub, S.R.L. 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 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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@nai-france.com, postmaster@naifrance.com, postmaster@nai-equation.com, postmaster@naiequation.com. Also on February 17, 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 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a United States company which operates a national and leading managed network of more than 375 commercial real estate firms. Complainant has used its NAI mark in the course of its business since at least 1997. Complainant is the registered owner of four United States trademarks for NAI, including Registered service mark No 2,199,582 for NAI, registered with the United States Patent and Trademark Office (“USPTO) on October 27, 1998 for use with real estate brokerage and agency services and real estate information services (“the NAI mark”).
Respondent is an officer of JLB3M Immobilier (“JLOBM”) a French entity and a former member of Complainant’s network under an agreement in writing entered into in July 2010.In that capacity Respondent registered the disputed domain names <nai-france.com>, <naifrance.com>, <nai-equation.com>, and <naiequation.com>. Complainant lawfully terminated that agreement, effective December 20, 2013 and the termination required Respondent to cancel any websites related to Complainant. Respondent no longer has authorization or license to use or register Complainant’s marks in a domain name.
Each of the disputed domain names is confusingly similar to Complainant’s NAI trademark as they embody the NAI trademarks, the geographic indicator “France” and other variations in spelling.
Respondent has no rights or legitimate interests in the domain names as Respondent is not commonly known by the domain names, it no longer has any authorization to have them registered in its name and, since the termination of the agreement, Respondent has attempted to interfere with Complainant’s online and offline identity and to trade on the goodwill of Complainant. Moreover, Respondent is not commonly known by the domain names or any of them.
Respondent registered and is using the disputed domain names in bad faith. For Respondent to use the domain names in connection with real estate services is itself in bad faith; they are being used in violation of the agreement referred to and without any other authorization to do so and any good faith registration has been negated by the termination of the agreement. Moreover, Respondent’s use of the <nai-france.com> domain name potentially diverts internet users from searching for Complainant’s services and amounts to unfairly benefitting from the goodwill associated with Complainant’s marks. This has been exacerbated by Respondent’s failure to comply with Complainant’s cease and desist letter. Moreover, by not making any active use of the <naifrance.com>, <nai-equation.com> and <naiequation.com> domain names is additional evidence of bad faith registration.
|
|
|
|
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company which operates a national and
leading managed network of more than 375 commercial real estate firms.
Complainant is the registered owner of four United States service marks for NAI which it uses in its business, including Registered service mark No 2,199,582
for NAI, registered with the United States Patent and Trademark Office (“USPTO”) on October 27, 1998 for use with real estate brokerage and agency services and real estate information services.
2.Respondent registered each of the disputed domain names on June 6, 2010. At that time, Respondent was an officer of JLB3M Immobilier (“JLOBM”) a French entity and a former member of Complainant’s network under an agreement in writing entered into in July 2010. Complainant lawfully terminated that agreement, effective December 20, 2013, informing Respondent, inter alia, that it had “no further right or license to use any of the NAI Service marks…”.
3.One of the domain names, <nai-france.com> resolves to an active website that displays the NAI mark and thus diverts internet users from searching for Complainant’s services. The remaining domain names do not resolve to active websites. Respondent retains the registration of all four domain names.
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.”).
The first question that arises is whether Complainant has rights in a
trademark or service mark on which it may rely. Complainant owns the NAI service mark through registration with the USPTO (e.g., Reg. No 2,199,582) on October 27, 1998. Complainant uses the NAI mark in connection with providing the services of a national and leading managed network of real estate firms. The Panel concludes that Complainant’s valid registration of the NAI mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s NAI mark. Complainant asserts the domain names are confusingly similar to the NAI mark as they contain the mark in its entirety and as they consist only of the mark together with the geographic indicator France, suggesting that they relate to the activities of Complainant in France and, in two cases, the word “equation.”. Prior panels have found that a geographic indicator does not avoid a finding of confusing similarity that is otherwise present, as it is in the present case. See New America Network, Inc., v. Wellborn Commercial Real Estate, NAF case No.1224594 (NAF Oct. 20, 2008). The Panel therefore finds that the <nai-france.com>, <naifrance.com> domain names are confusingly similar to the NAI mark. Two of the domain names include the word “equation” which is not part of the trademark and appear to come from “NAI EQUATION”, a business name by which JLOBM does business. But the dominant part of each of the domain names is, of course, “nai” and the objective bystander would have no doubt that they relate to Complainant and would assume that they are official domain names of Complainant in use in France. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). In any event, the addition of the word “equation” does not detract from the dominant presence in the domain names of the NAI mark. The Panel therefore finds that the <nai-equation.com> and <naiequation.com> domain names are confusingly similar to the NAI mark. Further, previous panels have found that the addition of a gTLD such as “.com” is insignificant when determining confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This Panel therefore finds that the disputed domain names are confusingly similar to the NAI mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NAI
mark and to use it in its domain names, adding only the geographic indicator “france” in two cases and the word “equation” in the other two cases, but in each case leaving the trademark NAI as the dominant feature of the domain names;
(b) Respondent registered the disputed domain names on June 6, 2010 .With respect to the domain name <nai-france.com>, this domain name resolves to Respondent’s website that is used to offer real estate services under the name NAI and is supported by the statement on the website: “Tous droits réservés © NAI France 2010”, thus purporting to be an official website of Complainant in France. As the remaining domain names were registered by Respondent on the same day and contain the NAI mark as their most dominant feature, they also represent that they are official domain names of Complainant;
(c)Respondent has continued to retain the registration of the disputed domain names and to use them in the manner so described without the authorization or consent of Complainant;
(d) Complainant submits that Respondent is not commonly known by the domain names or any variation of them or by the NAI mark. The Panel notes that the WHOIS information lists “Jones Mickael” as registrant of the domain names. As Respondent has failed to adduce any evidence to the contrary for the Panel’s consideration, the Panel finds no basis on the evidence for concluding that Respondent is commonly known by the disputed domain name or any variation thereof or by the NAI mark per Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
(e) Complainant also submitted that one of the reasons why Respondent lacks rights or legitimate interests in the disputed domain names is that any such right or interest it may have had was negated when the agreement between Complainant and JLOBM”) of July 2010 was terminated. The Panel has reviewed the evidence submitted by Complainant in this regard and finds that the agreement was terminated, thus bringing to an end any right that Respondent may have had to retain the registration of the disputed domain names. The Panel accepts Complainant’s submission and the evidence on which it is based and finds that Respondent has no right or legitimate interest in the disputed domain names. That view has been followed and applied in UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO Case May 7, 2001) (holding that a former distributor of the complainant’s products maintained rights and legitimate interests in respect to a domain name during the duration of its distributorship agreement, but such rights and interests ceased upon termination of the agreement.);
(f) Complainant also submitted that Respondent could not establish a right or legitimate interest in the disputed domain names by virtue of Policy¶ 4(c)(iii). The Panel agrees with that submission; clearly, Respondent is using the website to which the <nai-france.com> domain name resolves for a commercial purpose and its website is purely commercial; moreover, Respondent is not making a fair use of the domain names when it is using Complainant’s trademark without authority and to make money. Accordingly, Respondent could not bring itself within the provisions of Policy¶ 4(c)(iii);
(g) It is also apparent from the evidence that Respondent could not bring itself within any of the criteria of Policy¶ 4(c) that may be relied on to establish a right or legitimate interest in a domain name or within any of the other recognised bases on which that may be established.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
The Panel finds that Respondent registered the domain names in bad faith. On the evidence, the only right that Respondent had to register domain names incorporating the NAI mark was pursuant to the agreement to which reference has already been made. As was pointed out in the decision in UVA Solar GmbH & Co v. Mads Kragh, WIPO Case No.D2001-0373, a case of a distributorship that was terminated, “...registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which he was authorized to register it. Here, that breach is the Respondent's continued holding of the domain name in issue beyond the temporal limit of his distributorship for Denmark, compounded by renewing that registration in August 2001, when he had been on notice of the Complainant's position since January 31, 2000.” In that case the Panel held that the domain name at issue had thus been registered in bad faith. In the present case, the agreement did not give Respondent the right to register the domain names in his own name as registrant or to use Complainant’s trademarks in any way; the only right to do so was a limited right given to JLB3M Immobilier, not Respondent, to register the domain names. Respondent, by not filing a Response, has not given any explanation for why the domain names were registered in his personal name as registrant. Moreover, the agreement provides in effect that Complainant is retaining all rights to use its trademarks and that the only right given to Respondent to use the service marks is if the agreement is not terminated. As the agreement, on the evidence, has been terminated, Respondent’s rights were themselves terminated and Respondent lost whatever right he may have had to register the domain names. That view is supported by the UVA Solar decision referred to above and by the later decision in Elevation Bed, LLC. v. Contour Adjustable Beds, NAF Case No. 1433213 (NAF Apr. 28, 2012) (holding that the expiration or termination of the license agreement between the parties extinguished Respondent’s good faith registration of the domain names under Policy 4(a)(iii)), both of which were cited by Complainant. The Panel therefore finds that Respondent registered the disputed domain names in bad faith.
The Panel also finds that each of the disputed domain names has been used in bad faith. Clearly this is so in the case of <nai-france.com>, for Respondent’s website is used for real estate purposes, potentially diverting internet users from locating the services of Complainant at its own website and using in an open and brazen manner Complainant’s service mark and name and giving the false impression that the website is an official website of Complainant when it is not. It is also the case with the other domain names that are inactive; Respondent has retained the registration of those domain names despite Complainant’s cease and desist letter and despite the filing of the Complaint. Respondent can have no valid reason for doing so and can only be assumed to be holding them for an improper purpose. It has been open to Respondent to file a Response and give any explanation it may have for retaining the domain names but it has not done so; in the absence of any such explanation, the Panel draws the inference that Respondent has no such valid reason.
In summary and on the evidence, the Panel therefore finds that Respondent has retained the domain names to prevent Complainant from reflecting its mark in corresponding domain names within the meaning of ¶Policy 4(b)(ii), disrupt the business of Complainant within the meaning of ¶Policy 4(b)(iii) and create confusion about whether its website is an official or affiliated NAI website within the meaning of ¶Policy 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the NAI mark and in view of their use since then, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nai-france.com>, <naifrance.com>, <nai-equation.com>, and <naiequation.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 19, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page