Trovit Search, S.L. v. Yarantt c/o Patricia M
Claim Number: FA1104001384632
Complainant is Trovit Search, S.L. (“Complainant”), represented by Pablo Pratmarsó of Ubilibet, S.L., Spain. Respondent is Yarantt c/o Patricia M (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trovit.us>, registered with GODADDY.COM, INC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2011; the Forum received a hard copy of the Complaint on April 26, 2011.
On April 19, 2011, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <trovit.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 27, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2011>>, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <trovit.us> domain name is identical to Complainant’s TROVIT mark.
2. Respondent does not have any rights or legitimate interests in the <trovit.us> domain name.
3. Respondent registered and used the <trovit.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trovit Search, S.L., is a vertical search engine for classified jobs, cars, and real estate. Complainant was founded in late 2006 and operates in numerous countries around the world. Complainant owns the TROVIT mark and uses it in connection with its online classified ads. Complainant holds a trademark registration for its TROVIT mark with the Trade Register of Barcelona (Reg. No. B64342454 issued Oct. 11, 2006). Complainant also holds trademark registrations with a number of authorities around the world for its TROVIT mark, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,845,398 issued Sept. 7, 2010).
Respondent, Yarantt c/o Patricia M, registered the <trovit.us> domain name April 5, 2007. The disputed domain name resolves to a directory website with third-party links to commercial sites, some of which directly compete with Complainant’s classifieds 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 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has demonstrated its rights in the TROVIT mark. Complainant holds a trademark registration for its TROVIT mark with the Trade Register of Barcelona (Reg. No. B64342454 issued Oct. 11, 2006). Complainant also holds numerous trademark registrations for its TROVIT mark around the world including with the USPTO (Reg. No. 3,845,398 issued Sept. 7, 2010). Previous panels have found that a complainant may establish rights in a mark through registration with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant also asserts common law rights in its TROVIT mark through its continuous use in the promotion and operation of its online classified services since 2006. Complainant registered a number of domain names in connection with its online services including <trovit.es> registered on November 5, 2006 and <trovit.es.com> registered July 26, 2007, among others. Complainant asserts that the TROVIT mark is well known nationally and internationally by the general public and as of 2008, Complainant was the fifth largest real estate website in Spain based on number of monthly users. The Panel finds that Complainant has provided satisfactory evidence to support a finding of common law rights in the TROVIT mark pursuant to Policy ¶ 4(a)(i). 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 Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that Respondent’s <trovit.us> domain name is identical to its TROVIT mark. The disputed domain name incorporates the mark in its entirety and only adds the country code top-level domain (“ccTLD”) “.us.” Previous panels have found that the attachment of a ccTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel finds that Respondent’s <trovit.us> domain name is identical to Complainant’s TROVIT mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant alleges that Respondent has no rights or legitimate interests in the <trovit.us> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel decided the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” The Panel finds that Complainant has made a prima facie case in support of its claims. Respondent failed to submit a response to the Complaint, therefore, the Panel may interpret this as a waiver of any rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c).
The Panel concludes that Respondent does not have any rights or legitimate interests according to Policy 4(c)(i) since nothing in the record demonstrates that Respondent owns any service marks or trademarks reflected in the <trovit.us> domain name. See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Yarantt c/o Patricia M,” which is not similar to the disputed domain name. Complainant claims that it has not granted any license or authorization whatsoever to Respondent to use its TROVIT mark within the disputed domain name. The Panel finds that Respondent is not commonly known by the <trovit.us> domain name, pursuant to Policy ¶ 4(c)(iii), as there is nothing in the record that indicates otherwise. See 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 [UDRP] ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s <trovit.us> domain name resolves to a directory website featuring third-party links to commercial websites, some which directly compete with Complainant’s online classified services. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to operate a directory website re-routing Internet users to various sites, including those in competition with Complainant, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See 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)); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant alleges that Respondent’s disputed domain name disrupts its business. Respondent is operating a directory website which re-directs Internet users to various commercial websites, including some directly competing with Complainant’s classifieds business. Internet users intending to use Complainant to search for jobs, cars, real estate, etc., may find Respondent’s website and use a competing service as a result. The Panel finds that both Respondent’s registration and use of the <trovit.us> domain name disrupts Complainant’s business and is evidence of bad faith 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 UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel assumes that Respondent receives click-through fees from the previously mentioned links. Given the identical disputed domain name and the displayed links with content similar to that offered by Complainant, Internet users may become confused as to Complainant’s sponsorship of, or affiliation with, the resolving website and featured links. Respondent attempts to commercially gain from this confusion through the receipt of click-through fees. The Panel concludes that Respondent registered and is using the disputed domain name in bad faith according to 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 UDRP ¶ 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 [UDRP] ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trovit.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 24, 2011
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