The Regal Press, Inc. v. eCorp, Inc.
Claim Number: FA0607000755729
Complainant is The Regal Press, Inc. (“Complainant”), represented by James Blanchette, of Cesari and McKenna LLP, 88 Black Falcon Ave, Boston, MA 02210. Respondent is eCorp (“Respondent”), Po box 441688, Indpls, IN 46244.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <procurelink.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 21, 2006.
On July 31, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <procurelink.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2006 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@procurelink.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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." 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 makes the following assertions:
1. Respondent’s <procurelink.com> domain name is identical to Complainant’s PROCURELINK mark.
2. Respondent does not have any rights or legitimate interests in the <procurelink.com> domain name.
3. Respondent registered and used the <procurelink.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Regal Press, Inc., has registered the PROCURELINK mark with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 2,396,495 issued October 17, 2000). Complainant uses the PROCURELINK mark in connection with offering computerized online ordering of custom printing services.
Respondent registered the <procurelink.com> domain name on August 25, 2003. Respondent is using the domain name to redirect Internet users to Respondent’s website composed of a generic Internet search engine and links to third-party websites. Respondent’s website also solicited advertisers and offers the disputed domain name for sale through a separate auction website, with a minimum bid of $5,000. Additionally, Respondent has previously been the subject of ICANN disputes with other Complainants in which the panels transferred Respondent’s domain names to the complainants.
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. 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 registered the PROCURELINK mark with the USPTO
three years before Respondent registered the disputed domain name. The Panel finds that Complainant’s
registration of the PROCURELINK mark establishes Complainant’s right in the
mark pursuant to Policy ¶ 4(a)(i). Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <procurelink.com>
domain name is identical to Complainant’s PROCURELINK mark. The addition of the top-level domain
“.com” does not differentiate the disputed domain name from Complainant’s mark
because all domain names require the addition of a top-level domain. For example, in Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found that the
pomellato.com domain name was identical to the complainant’s POMELLATO mark
despite the addition of the “.com” top-level domain. Similarly, in Blue Sky Software Corp. v. Digital Sierra, Inc.,
D2000-0165 (WIPO Apr. 27, 2000), the panel held that the "addition of .com
is not a distinguishing difference."
Thus, the Panel finds that the <procurelink.com> domain
name is identical to Complainant’s PROCURELINK mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website composed of links to third-party websites and a generic Internet search engine. Respondent’s website also solicits advertisers to post advertisements on the website. Presumably, Respondent is profiting from these links, advertisements and the search engine by collecting pay-per-click referral fees. In Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the panel failed to find rights or legitimate interests where the respondent used the disputed domain name to redirect Internet users to its website featuring a series of links to third-party websites. Similarly, in TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found that the respondent’s use of the disputed domain name was not a bona fide offering of goods or services where the respondent’s website consisted of links to third-party websites. Respondent’s website also includes a link to an auction website offering the <procurelink.com> domain name for auction, with a required starting bid of $5,000. In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), the panel held that the respondent’s willingness to sell the disputed domain name indicated that the respondent lacked rights or legitimate interests in the disputed domain name. The Panel finds that such use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
There is no available evidence that Respondent is commonly known by the disputed domain name. Respondent’s WHOIS information identifies Respondent as “eCorp,” a name apparently unrelated to the <procurelink.com> domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that the respondent’s WHOIS information could be one factor in determining whether the respondent was commonly known by the disputed domain name as outlined in Policy ¶ 4(c)(ii). Further, Complainant asserts without contradiction, that Respondent is not affiliated with or sponsored by Complainant and Complainant has not given Respondent permission to use Complainant’s mark in a domain name. The panel in Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), found that the respondent lacked rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which features links to third-party websites. Once of the links on Respondent’s website redirects Internet users to an auction website where the <procurelink.com> domain name is offered for auction, with a minimum starting bid of $5,000. While there is nothing inherently wrong with offering a domain name for sale, previous panels have found bad faith where the domain name for sale is identical to or confusingly similar to another’s mark and is being offered for sale at a price in excess of the respondent’s actual out-of-pocket costs. For example, in Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003), the panel found bad faith where the respondent offered the disputed domain name for sale for $2,000. Similarly, in Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000), the panel found that offering the disputed domain name for auction evidenced bad faith on the part of the respondent. Thus, the Panel finds that Respondent has evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(i) by offering the disputed domain name for auction.
This is not the first time that a domain name registered to Respondent has been the subject of an ICANN dispute. E.g., Artnews L.L.C. v. Ecorp.com, FA 95231 (Nat. Arb. Forum Aug. 22, 2000), Gruner + Jahr Printing & Publ’g v. Ecorp.com, FA 114587 (Nat. Arb. Forum Aug. 6, 2002) and WFBQ-FM/WRZX-FM v. Ecorp.com, FA 105852 (Nat. Arb. Forum Apr. 23, 2002). In the foregoing cases, Respondent was found to lack rights or legitimate interests in the disputed domain names, and was found to be acting in bad faith. While Complainant was not a party to any of these previous disputes, Respondent has nonetheless demonstrated a pattern or registering domain names that include the marks of others. In Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000), the panel found that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks. Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent’s <procurelink.com> domain name is identical to Complainant’s PROCURELINK mark. Internet users seeking Complainant’s goods and services may use Complainant’s PROCURELINK mark in an Internet search engine or by typing it directly into a web browser and thus find themselves redirected to Respondent’s website. Because the disputed domain name is identical to Complainant’s mark, Internet users may mistakenly believe that Respondent’s website is somehow affiliated with Complainant. Respondent is capitalizing on this confusion by using its website to host links to third-party websites and to solicit advertisers to post advertisements on the website. Presumably, Respondent is receiving financial remuneration from advertisers and from the third-party websites. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent took advantage of Internet users’ mistake by posting links to third-party websites.
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 <procurelink.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 11, 2006
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