Natural Verifiers, LLC v. Yasutaka Sakatani / NameScript co.,Ltd.
Claim Number: FA1707001739956
Complainant is Natural Verifiers, LLC (“Complainant”), represented by Marvin H. Kleinberg of Kleinberg & Lerner, LLP, California, USA. Respondent is Yasutaka Sakatani / NameScript co.,Ltd. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naturalverifiers.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2017; the Forum received payment on July 13, 2017.
On July 18, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <naturalverifiers.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 July 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2017 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@naturalverifiers.com. Also on July 20, 2017, 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 August 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is an independent, third party verification agency that enforces rigorous standards in the organic and natural food industry. Complainant uses the NATURAL VERIFIERS mark to promote its business and registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,877,679, registered Nov. 16, 2010). Respondent’s <naturalverifiers.com> domain name is identical to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent has no rights or interests in <naturalverifiers.com>. Complainant has not licensed or otherwise authorized Respondent to use its NATURAL VERIFIERS mark in any fashion, and Respondent is not commonly known by <naturalverifiers.com>. Moreover, the resolving website is not used in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, the domain name resolves to a website offering information and products unrelated to Complainant’s business.
iii) Respondent registered and is using the <naturalverifiers.com> domain name in bad faith. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the NATURAL VERIFIERS mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant.
B. Respondent
Respondent did not submit a Response. The Panel notes that the <naturalverifiers.com> domain name was registered on September 20, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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."
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Complainant has requested for the language of the proceedings in English on the grounds that the disputed domain name was registered in English and was written in the English alphabet and that the company name is written in English.
The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. In the absence of a Response and given no objection to Complainant's request for the language of proceeding, after considering the circumstance of the present case, pursuant to UDRP Rule 11(a), the Panel decides English to be the language of the proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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(f), 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 (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 contends it registered its NATURAL VERIFIERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,877,679, registered Nov. 16, 2010). Registration of a mark with a trademark authority confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the NATURAL VERIFIERS mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <naturalverifiers.com> domain name is identical to Complainant’s mark because it merely appends the generic top-level domain (gTLD) “.com” to the fully incorporated mark. A domain name and mark are still identical when a gTLD is added to the fully incorporated mark and spaces in a mark are eliminated. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). As such, the Panel holds that Respondent’s<naturalverifiers.com> domain name is identical to Complainant’s mark.
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 (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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its NATURAL VERIFIERS mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record lists “WHOIS PRIVACY PROTECTION SERVICE BY VALUE-DOMAIN”, as the registrant prior to the lifting of the privacy services, and “YASUTAKA SAKATANI” as the registrant, currently. Therefore, the Panel holds that Respondent is not commonly known by <naturalverifiers.com> domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent has failed to use the <naturalverifiers.com> resolving website in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant alleges that Respondent is using the resolving website to promote an unrelated “bust cream” business. Use of a domain name to divert Internet users to websites unrelated to a complainant's business may not represent 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, e.g., Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003). Here, Complainant has provided screenshots of the <naturalverifiers.com> resolving website which displays information about a Japanese bust cream that is entirely unrelated to Complainant’s business. Therefore, the Panel holds that Respondent has failed to use the <naturalverifiers.com> resolving website in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant contends it originally registered the domain name <naturalverifiers.com> domain name but the registration inadvertently lapsed because no notice of the expiration was received. Complainant alleges Respondent opportunistically registered the disputed domain name when the registration lapsed. Respondents lack rights and legitimate interests when the respondent fails to respond to the complainant and when the domain name was registered opportunistically when the registration lapsed. See Clark v. HiNet, Inc., FA 405057 (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). Therefore, the Panel holds that Respondent lacks rights and legitimate interests in the <naturalverifiers.com> domain name.
Complainant contends that Respondent has registered and is using the <naturalverifiers.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the NATURAL VERIFIERS mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <naturalverifiers.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 18, 2017
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