national arbitration forum

 

DECISION

 

Offix LC v. Hiname Networks

Claim Number: FA0702000917210

 

PARTIES

 

Complainant is Offix LC (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger Burgoyne, LLP, 150 Post Street, Suite 520, San Francisco, CA 94108.  Respondent is Hiname Networks (“Respondent”), N601, A, No.89, Zhongshan Avenue, Guangzhou 510000, CN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <offix.com>, registered with Enom, Inc.

 

PANEL

 

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.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2007.

 

On February 15, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <offix.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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").  Although Respondent has requested that this matter proceed in Chinese, because ICANN Rule 11(a) states that the language of the administrative proceeding shall be the language of the registration agreement, which is English, Respondent’s request is denied.

 

On February 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2007 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@offix.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 15, 2007, 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <offix.com> domain name is identical to Complainant’s OFFIX mark.

 

2.      Respondent does not have any rights or legitimate interests in the <offix.com> domain name.

 

3.      Respondent registered and used the <offix.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Offix LC, is a provider of office solutions.  In connection with the provision of these services, Complainant registered the OFFIX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,653,592 issued November 26, 2002).  The date of filing for Complainant’s USPTO registration was March 23, 2001.

 

Respondent registered the <offix.com> domain name on August 23, 2002.  The disputed domain name resolves to a website displaying links to commercial, third-party websites, some of which compete directly with Complainant’s business.

 

DISCUSSION

 

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.  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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the OFFIX mark through registration with the USPTO.  The Panel finds that Complainant’s federal registration with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i).   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.”).

 

Although Respondent’s registration of the disputed domain name predates Complainant’s registration date, Complainant asserts rights in the OFFIX mark from March 23, 2001, the date Complainant filed its federal registration application.  The Panel finds that Complainant’s rights in the OFFIX mark date to the original date of filing of the USPTO registration pursuant to Policy ¶ 4(a)(i).  See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Complainant further asserts that Respondent’s <offix.com> domain name is identical to Complainant’s OFFIX mark.  The disputed domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a gTLD to an otherwise identical mark fails to indicate that the disputed domain name is sufficiently distinctive pursuant to Policy ¶ 4(a)(i).  Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

In instances where Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to introduce solid evidence to indicate it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).

 

Complainant alleges that Respondent is using the disputed domain name to redirect Internet users to its own website, which displays links to commercial, third-party websites, from which Respondent presumably receives referral fees.  The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Complainant contends that Respondent has never been known by Complainant’s mark.  After reviewing Respondent’s WHOIS information, it is evident that the registrant of the <offix.com> domain name is “Hiname Networks.”  Lacking any evidence likely to support a contradictory conclusion, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that the respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a website featuring links to competing websites.  Unsuspecting Internet users are likely to become confused as to the source and affiliation of the resultant websites.  The Panel finds that such use is a disruption of Complainant’s business and evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Additionally, it is safe to presume that Respondent receives monetary compensation in the form of “click-through” referral fees through the operation of its portal website.  The Panel finds that such use amounts demonstrates registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <offix.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 23, 2007

 

 

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