National Arbitration Forum

 

DECISION

 

The Filta Group, Inc. v. whoisper.com

Claim Number: FA0902001247964

 

PARTIES

Complainant is The Filta Group, Inc. (“Complainant”), represented by George Payor, Florida, USA.  Respondent is whoisper.com (“Respondent”), represented by Donnacha Mac Gloinn, United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <filta.com>, registered with Everyones Internet, Ltd. d/b/a Resellone.net.

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 17, 2009.

 

On February 25, 2009, Everyones Internet, Ltd. d/b/a Resellone.net confirmed by e-mail to the National Arbitration Forum that the <filta.com> domain name is registered with Everyones Internet, Ltd. d/b/a Resellone.net and that the Respondent is the current registrant of the name.  Everyones Internet, Ltd. d/b/a Resellone.net has verified that Respondent is bound by the Everyones Internet, Ltd. d/b/a Resellone.net 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 March 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 2009 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@filta.com by e-mail.

 

A Response was received on March 25, 2009.  However because it was received after the response deadline, the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5. 

 

Complainant submitted an Additional Submission on March 31, 2009 that was determined to be deficient pursuant to Supplemental Rule 7 because the corresponding fee was not received.

 

Respondent submitted an Additional Submission on April 8, 2009 that was in compliance with Supplemental Rule 7.

 

On March 31, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends it has established rights in the FILTAFRY mark via its registration issued June 25, 2002.  The original registrant of the FILTAFRY mark is Filta Group, Ltd., a United Kingdom company.  Complainant contends the original registrant assigned rights in the FILTAFRY mark to Complainant.

 

B. Respondent

Respondent contends that the filta.com domain name is not confusingly similar to a mark in which the Complainant has rights.  Respondent asserts that Internet users will not be confused as to the source of the filta.com domain name since the disputed domain name does not include the word FRY and therefore, the disputed domain name is not confusingly similar.

 

C. Additional Submissions

No additional submissions are considered.

 

FINDINGS

The Panel finds that the original registrant’s subsequent assignment of the mark with the USPTO establishes Complainant’s rights in the mark under Policy 4(a)(i).  Complainant’s rights in the mark date to the filing date of the mark.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 contends that it has established rights in the FILTAFRY mark via its registration (Reg. No. 2,585,933 issued June 25, 2002) with the United States Patent and Trademark Office (“USPTO”).  The filing date of the FILTAFRY registration was September 24, 1999.  The original Registrant of the FILTAFRY mark is Filta Group Limited, a United Kingdom company which allegedly licensed Complainant to offer franchises in the United States.  Complainant contends the original registrant assigned rights in the FILTAFRY mark to Complainant.  The Panel finds that registration and subsequent assignment of the mark with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), dating back to the mark’s filing date.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also remithome Corp v. Pupalla, FA 1124302  (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment); 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); see also remithome Corp v. Pupalla, FA 1124302  (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).

 

Complainant asserts that the <filta.com> domain name is confusingly similar to its FILTAFRY mark.  The disputed domain name omits “FRY” from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the <filta.com> domain name is confusingly similar to Complainant’s FILTAFRY mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).

 

Rights or Legitimate Interests

 

The Panel is reminded that 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.  The Panel finds that Complainant has submitted a sufficient prima facie case.  See 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 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 (Nat. Arb. 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 it has not granted Respondent any license to use its FILTAFRY mark.  The WHOIS information associated with the disputed domain names lists Respondent as “whoisper.com.”  The Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Complainant contends that the only use Respondent has made of the disputed domain name is as a parking website with links to third-parties, some of which directly compete with Complainant.  The Panel finds that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).

 

Complainant contends that Respondent contacted them through Hugh Beckett, a domain name broker, and offered to sell Complainant the disputed domain name for €9,000.  The Panel finds that Respondent offered to sell the disputed domain name to Complainant in excess of out-of-pocket expenses and therefore lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent offered to sell Complainant the disputed domain name for €9,000 through a domain name broker.  The Panel finds that Respondent offered to sell the disputed domain name to Complainant in excess of out-of-pocket expenses and therefore registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); but see Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).

 

Complainant contends that the <filta.com> domain name is being used to display third-party website links, some of which directly compete with Complainant.  The Panel finds that Respondent is attempting to disrupt Complainant’s business by redirecting Internet users to Complainant’s competitors through a domain name that is confusingly similar to its FILTAFRY mark, and that therefore, Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant asserts that Respondent is using the <filta.com> domain name to divert Internet users in search of Complainant to Respondent’s competing <filta.com> domain name and profit via pay-per-click fees.  Complainant asserts that Respondent is profiting from Internet users’ confusion as to Complainant’s affiliation with or sponsorship of the resolving website.  The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

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

 

 

 

 

Louis E. Condon, Panelist
Dated: April 23, 2009

 

 

 

 

 

 

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