Nourison Industries, Inc. v. Haitham Mohamed
Claim Number: FA1005001325003
Complainant is Nourison
Industries, Inc. (“Complainant”), represented by Yuval H. Marcus, of Leason Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nourisonrugs.net>, registered with DomainPeople, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2010.
On June 2, 2010, DomainPeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <nourisonrugs.net> domain name is registered with DomainPeople, Inc. and that Respondent is the current registrant of the name. DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, 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 June 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nourisonrugs.net. Also on June 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
On June 30, 2010, Respondent electronically filed his untimely Response, together with correspondence claiming delayed service and a reduced period within which to file a Response to the Complaint.
On July 6, 2010, Complainant electronically filed an Additional Submission in the form of a Reply in rebuttal to the late Response.
On July 12, 2010, Respondent electronically filed an Additional Submission in the nature of a Reply to Complainant’s Additional Submission of July 6, 2010.
Having reviewed the late Response and each of the Additional Submissions, the Panel finds the delayed filing to be without justification or excuse; moreover, the Panel finds the content of the late Response and Additional Submission of Respondent to be without merit and inadequate to raise a substantive defense. The Notification of Respondent Default is affirmed.
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" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents timely 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 timely response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nourisonrugs.net> domain name is confusingly similar to Complainant’s NOURISON mark.
2. Respondent does not have any rights or legitimate interests in the <nourisonrugs.net> domain name.
3. Respondent registered and used the <nourisonrugs.net> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Nourison Industries, Inc., provides floor covering, such as handmade area rugs. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NOURISON (e.g., Reg. No. 3,721,238 registered on December 8, 2009) and NOURISON POWERLOOM marks (e.g., Reg. No. 2,365,974 registered on July 11, 2000). Complainant provides evidence of common law rights in the NOURISON mark dating back to 1980.
Respondent, Haitham Mohamed, registered the <nourisonrugs.net> domain name on November 7, 2006. The disputed domain name resolves to a website that displays links to third-party websites, some of which compete with Complainant’s business.
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 timely 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 asserts rights in the NOURISON mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,721,238 registered on December 8, 2009). The Panel finds this registration sufficiently establishes Complainant’s rights in the NOURISON mark under Policy ¶ 4(a)(i). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also asserts common law rights in its NOURISON mark through its continuous use since 1980 and the consequent development of secondary meaning in the mark. Complainant submits numerous articles discussing its 30 year anniversary and referencing the NOURISON mark in conjunction with Complainant’s business. Complainant has also substantially marketed its products under the NOURISON mark through catalogs, videos, mailers, inserts, and online via its website at <nourison.com>. In addition, Complainant has registered other marks that include the term “Nourison,” including NOURISON POWERLOOM (e.g., Reg. No. 2,365,974 registered on July 11, 2000). The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the NOURISON mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1980. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant claims Respondent’s <nourisonrugs.net> domain name is confusingly similar to its NOURISON mark. Respondent incorporates Complainant’s mark in its entirety in the disputed domain name. Respondent also adds the descriptive term “rugs,” which describes Complainant’s goods, and the generic top-level domain (“gTLD”) “.net” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not render Respondent’s disputed domain name distinct from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds Respondent’s <nourisonrugs.net> domain name is confusingly similar to its NOURISON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may interpret Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to respond, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists “Haitham Mohamed” as the registrant of the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant avers Respondent uses the disputed domain name
to resolve to a website featuring links to third-party websites. Complainant submits screen shots of
Respondent’s resolving website. These
images show links to third-party websites like <rugstown.com>, which
offers products that compete with Complainant’s goods, as well as other
third-party websites. Complainant
alleges Respondent receives click-through fees from this use. The Panel finds Respondent’s use of the
confusingly similar <nourisonrugs.net> domain name to receive
click-through fees does not constitute 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). See
Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum
Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites); see
also Wal-Mart Stores, Inc. v. Power of
Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims the <nourisonrugs.net> domain name diverts Internet consumers seeking its website to Respondent’s website. The Panel finds Respondent’s use of the disputed domain name to redirect Internet users to third-party competing websites disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant also alleges Respondent uses the <nourisonrugs.net> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s NOURISON mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, Respondent’s disputed domain name is confusingly similar to Complainant’s mark. Furthermore, Respondent most likely profits from this confusion through the receipt of click-through fees. Therefore, the Panel finds this behavior further evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nourisonrugs.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 14, 2010
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