WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONT-N-T Carports, Inc. v. Private Who is For bpelprip1701 / Pluto Domain Services Private LimitedCase No. D2008-16051. The PartiesThe Complainant is T-N-T Carports, Inc., of Mount Airy, North Carolina, United States of America, represented by Gregory A. Pool, of United States of America. The Respondent is Private Who is For bpelprip1701 / Pluto Domain Services Private Limited, both of Mumbai, Maharashtra, India. 2. The Domain Name and RegistrarThe disputed domain name <tntcarports.com> is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On November 6, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 7, 2008. The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2008. The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 12, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background1. The Complainant is a seller and constructor of pre-fabricated carports and garages, principally to customers in the United States of America (“U.S.”). 2. The Complainant commenced business in January 1998 and now has over 100 employees and an annual turnover of 100 million USD. 3. The Complainant has used the trade mark T-N-T CARPORTS in relation to that business and has two U.S. federally registered trade marks. 4. The Complainant has not licensed or otherwise permitted the Respondent to use the trade mark or to register or use any domain name incorporating the trade mark. 5. The disputed domain name was registered on November 15, 2002. 6. The disputed domain name corresponds with a portal style website, “www.tntcarports.com” which carries numerous links to third party retailers of goods which compete with the Complainant’s goods. 7. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant. 5. Parties’ ContentionsA. ComplainantThe Complainant asserts trade mark rights and states that the disputed domain name “is identical and confusingly similar” to the trade mark. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. The detail of the Complaint is included where necessary in Part 6 of this Decision. B. RespondentThe Respondent did not reply to the Complainant’s contentions. 6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, the complainant must prove that: (i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Preliminary Issue: Identification of RespondentThe Complainant originally nominated Private Who is For bpelprip1701, Private Whois Escrow Domains Private Limited as the Respondent. The named Respondent appeared to be a proxy service company. On November 6, 2008, the Registrar disclosed Pluto Domain Services Private Limited as the registrant of the disputed domain name. Subsequently, at the invitation of the Center, the Complaint was amended to nominate Private Who is For bpelprip1701 and Pluto Domain Services Private Limited as Respondents (collectively “Respondent”). The Center repeatedly asked the Registrar to indicate the beneficial owner of the domain name but that information was not forthcoming. The Complaint presented information which points in the direction of a third-party beneficial owner of the domain name, however the Panel finds that forensically there is not enough to link that party with the nominated Respondent or to require substitution or addition of that party to the present proceedings. Accordingly, the Panel treats this Complaint as proceeding against the Respondent as described. B. Identical or Confusingly SimilarThe Complainant premises its trade mark rights on U.S. Federal Trademark Registration Nos. 3,383,798, and 3,383,799, both filed on June 29, 2007 and both registered on February 19, 2008, which state a first use in commerce as of 1998. The registrations are in the name of the Complainant. In each case, the trade mark is stylised, the letters “T-N-T” featuring prominently and being arranged in a manner suggestive of the outline of a building. Below this device element is the company name “T-N-T CARPORTS INC.” Whilst the registrations establish rights in the trade mark1, it can not be said that the trade mark, as registered, is identical to the disputed domain name. Discounting the minor differences which typically still permit a finding of legal identity2, the device element created in this case by the use of the lettering is such to give rise to confusing similarity. That said, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to the trade mark3. The Panel accordingly, finds that the Complainant has satisfied the first element of the Policy. C. Rights or Legitimate InterestsThe complainant has the burden to establish that the respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the complainant need only make out a prima facie case, after which the onus shifts to the respondent to demonstrate rights or legitimate interests4. Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The WhoIs data does not support any argument that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights in the name, registered or not. The Complainant has stated there to be no relationship between the parties. The Respondent does not appear to be using, nor has it presented evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent appears to be using the disputed domain name to re-direct Internet users to commercial websites that promote the goods of competitors in the same business as the Complainant. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name5. The Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result. The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has established the second limb of the Policy. D. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. What is noteworthy about paragraphs 4(b)(i)-(iv) of the Policy is that they are cases of both registration and use in bad faith. Paragraph 4(b) of the Policy is not exhaustive and other instances of bad faith might be in evidence. However, the Panel will turn to first test the facts against the enumerated examples. The Complaint does not make specific reference to any of paragraphs 4(b)(i)-(iv) of the Policy but its language makes it fairly plain that the Complainant alleges that the Respondent’s conduct falls under paragraphs 4(b)(ii) and (iv) of the Policy. Since paragraph 4(b)(ii) of the Policy requires examination of the Respondent’s pattern of conduct, the Panel prefers to turn to the paragraph 4(b)(iv) of the Policy claim in the first instance. Paragraph 4(b)(iv) of the Policy requires a use of the domain name creating a likelihood of confusion with the complainant’s mark as to the source of the online location to which Internet users are attracted. The Panel has already found the domain name to be confusingly similar to the trade mark. The Panel finds that the likelihood of confusion as to source is therefore highly likely. Paragraph 4(b)(iv) of the Policy also requires an intention for commercial gain. What is required is proof that it is more likely than not that intention existed; absolute proof is not required and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory6. The Complainant states that: “It is now a well known practice to display on a webpage or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.” The links in question are principally to manufactures and sellers of metal buildings, carports and garages, all goods competing in the marketplace with the Complainant’s products. On the facts, the Panel finds it more likely than not that the Respondent had the requisite intention for commercial gain. Moreover, what is clear is that use of a domain name in this same manner is very frequently for commercial gain7. Also, the Panel notes that while the Complainant’s trade mark was registered after the disputed domain name was registered, the Panel is satisfied that the Complainant has established common law trade mark rights in the relevant mark dating from the inception of its business, and the stated first use in commerce of the Complainant’s trade mark, in 1998, which does predate the disputed domain name’s registration by the Respondent such that, taken in conjunction with the use of the disputed domain name, the Panel is satisfied the disputed domain name was registered in bad faith. The Panel finds that the Complainant has shown the Respondent’s use of the disputed domain name falls under paragraph 4(b)(iv) of the Policy and was therefore used and registered in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy. 7. DecisionFor all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tntcarports.com> be transferred to the Complainant.
Debrett G. Lyons Dated: December 29, 2008 1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)). 2 See Vin Diesel v. LMN a/k/a L.M. Nordell, NAF Case No. 804924 finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (‘gTLD’) ‘.com’ [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy 4(a)(i)”. 3 See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 holding confusing similarity when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other non-distinctive terms in the domain name. 4 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. 741828; AOL LLC v. Jordan Gerberg, NAF Case No. 780200. 5 See, for example, Bank of America Corporation v. Azra Khan, NAF Case No. 124515 (finding that the respondent’s diversionary use of the domain name to <magazines.com> was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. 6 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. 95095 (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. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the complaint.”). 7 See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.magazines.com” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant’s mark to profit in the form of commissions by linking of the Ticketsnow.com Affiliate Program”); Yahoo! Inc. v. DFI Inc., NAF Case No. 147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Case No. 125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-1605.html
: |
|
|