United Refining Company v. Domain Drop S.A.
Claim Number: FA0708001055144
Complainant is United Refining Company (“Complainant”), represented by Michael
Maoz, of Kramer Levin Naftalis & Frankel LLP,
1177 Avenue of the
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <unitedrefiningcompany.com>, registered with Belgiumdomains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 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@unitedrefiningcompany.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <unitedrefiningcompany.com> domain name is confusingly similar to Complainant’s UNITED REFINING CO. mark.
2. Respondent does not have any rights or legitimate interests in the <unitedrefiningcompany.com> domain name.
3. Respondent registered and used the <unitedrefiningcompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Refining Company, began using the UNITED REFINING CO. mark in 1922 in connection with petroleum products and light distillates such as gasoline and heating oil, respectively. Complainant conducts business under the name “United Refining Company,” and holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the UNITED REFNINING CO. mark (Reg. No. 2,048,678 issued Apr. 1, 1997).
Respondent, Domain Drop S.A.,
registered the <unitedrefiningcompany.com> domain name on
or about
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.
Complainant successfully registered its UNITED REFINING CO.
trademark with the USPTO in 1997. Under
the Policy, registration of a mark with an appropriate governmental authority
confers rights in that mark to a complainant.
Therefore, the Panel finds that Complainant has established rights to
the UNITED REFINING CO. mark pursuant to Policy ¶ 4(a)(i). See
Enter. Rent-A-Car Co. v. Language Direct,
FA 306586 (Nat. Arb. Forum
The Panel finds that Respondent’s <unitedrefiningcompany.com> domain name is confusingly
similar to Complainant’s UNITED REFINING CO. mark pursuant to Policy ¶ 4(a)(i). Respondent’s
domain name spells out the word “company” referenced in Complainant’s mark, and
removes the spaces as well as adds the generic top-level domain (“gTLD”)
“.com.” These changes do not distinguish
the <unitedrefiningcompany.com>
domain name from Complainant’s mark. See Microsoft Corp. v. Montrose Corp.,
D2000-1568 (WIPO
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <unitedrefiningcompany.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <unitedrefiningcompany.com>
domain name. Respondent has not
responded to the Complaint, and therefore does not rebut this allegation. The Panel can find no other evidence in the
record indicating that Respondent is commonly known by the disputed domain
name. Therefore, the Panel concludes
that Respondent is not commonly known by the <unitedrefiningcompany.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum
Respondent is using the <unitedrefiningcompany.com> domain name to display a list of hyperlinks and pop-up advertisements, some of which advertise the products of Complainant’s competitors. The Panel infers that Respondent likely receives click-through referral fees for each redirected Internet user. Thus, the Panel finds that this does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Some of the links advertised on Respondent’s website that
resolve from the <unitedrefiningcompany.com>
domain name advertise the gasoline products of Complainant’s competitors. The Panel believes this is likely to disrupt
Complainant’s business by diverting Complainant’s potential customers to the
websites of Complainant’s competitors.
Therefore, the Panel finds that Respondent registered and is using the <unitedrefiningcompany.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and
used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when
the disputed domain name resolved to a website that displayed commercial links
to the websites of the complainant’s competitors); see also David Hall Rare Coins v.
Complainant has alleged that Respondent’s <unitedrefiningcompany.com> domain name, which is confusingly similar to Complainant’s UNITED REFINING CO. mark, is likely to cause confusion among customers searching for Complainant’s gasoline products. Complainant has further alleged that Respondent is creating a false impression as to the source, sponsorship, affiliation, or endorsement of the products advertised by the links on Respondent’s website that resolves from the <unitedrefiningcompany.com> domain name. The Panel agrees with Complainant, and believes that Respondent likely receives click-through referral fees for each redirected Internet user. Therefore, Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s UNITED REFINING CO. mark. Accordingly, the Panel finds that Respondent registered and is using the <unitedrefiningcompany.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <unitedrefiningcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 21, 2007
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