Trout Unlimited, Inc. v. Nazfezer Terrazik c/o Nafzer
Claim Number: FA1106001394978
Complainant is Trout Unlimited, Inc. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California, USA. Respondent is Nazfezer Terrazik c/o Nafzer (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troutunlimited.org>, registered with eNom.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received payment on June 23, 2011.
On June 22, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <troutunlimited.org> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2011 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@troutunlimited.org. Also on June 23, 2011, 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 response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <troutunlimited.org> domain name is identical to Complainant’s TROUT UNLIMITED mark.
2. Respondent does not have any rights or legitimate interests in the <troutunlimited.org> domain name.
3. Respondent registered and used the <troutunlimited.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TROUT UNLIMITED mark at issue here (Reg. No. 3,847,397 filed December 14, 2009; registered September 14, 2010). Complainant uses the mark in connection with its membership organization devoted to the conservation and preservation of trout and coldwater fisheries.
Respondent, Nazfezer Terrazik c/o Nafzer, registered the <troutunlimited.org> domain name on September 16, 2002. The disputed domain name resolves to a parked website which features advertisements and sponsored links to third-party websites.
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 holds a trademark registration with the USPTO for its TROUT UNLIMITED mark (Reg. No. 3,847,397 filed December 14, 2009; registered September 14, 2010). Complainant’s registration of the mark with the USPTO is sufficient to establish rights in the mark pursuant to 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).”). The fact that Respondent operates in Singapore while Complainant operates in the United States is irrelevant to Policy ¶ 4(a)(i) analysis. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel holds that Complainant has established its rights in the TROUT UNLIMITED mark under Policy ¶ 4(a)(i) through its registration with the USPTO. These rights, however, only date back to the date Complainant filed for trademark protection, December 14, 2009. See 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).
Although Complainant alleges that its common law rights in the mark began in 1959, it did not present any evidence whatsoever to support that allegation. The Panel therefore finds that Complainant has not established common law rights under Policy ¶ 4(a)(i). See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”).
Respondent’s <troutunlimited.org> domain name is identical to its TROUT UNLIMITED mark, as it wholly incorporates Complainant’s mark. The only changes made to Complainant’s mark are the elimination of the space between the words “trout” and “unlimited,” and the addition of the generic top-level domain “.org”. These changes are insufficient to distinguish the disputed domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <troutunlimited.com> domain name. Initially, Complainant shoulders the burden of making a prima facie case. Once this requirement has been satisfied, as is the case here, the burden shifts to Respondent to refute Complainant’s claims. 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.”). By not responding to the Complaint, Respondent has failed to meet its burden. Past panels have construed this as strong evidence of a lack of rights and legitimate interests in the disputed domain name for the purposes of Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will nonetheless examine the record to determine whether Respondent has rights or legitimate interests in the <troutunlimited.org> domain name.
Complainant contends that Respondent is not commonly known by <troutunlimited.org> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent as “Nazfezer Terrazik c/o Nafzer,” which bears absolutely no resemblance to <troutunlimited.org>. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Complainant states that Respondent is not licensed or otherwise authorized to use its mark. Absent any contrary evidence in the record, the Panel concludes that Respondent is not commonly known as the <troutunlimited.org> domain name pursuant to Policy ¶ 4(c)(ii). See 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 further alleges that Respondent uses the disputed domain name to operate a parked website, featuring links to commercial third-party sites. The Panel infers that Respondent receives click-through fees every time an Internet user visits one of the site’s third-party sponsors. The Panel finds that Respondent’s use of Complainant’s mark for this purpose is not a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant’s trademark rights only date back to the date it filed for trademark protection, December 14, 2009. Because Respondent’s registration of the disputed domain name in this case came years before Complainant’s filing date, on September 16, 2002, the Panel is forced to conclude that no bad faith could have existed at the time Respondent registered the disputed domain name. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). Complainant has not provided any evidence of common law rights to the mark that predate Respondent’s registration of the disputed domain name. Thus, the Panel concludes that Respondent’s registration of the disputed domain name predates Complainant’s rights in the mark, and that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(i). See OCZ Tech. Group, Inc. v. Megazine Publ’ns, FA 244094 (Nat. Arb. Forum Apr. 29, 2004) (“The UDRP has consistently been interpreted as requiring a Complainant to establish rights that predate Respondent’s registration of the disputed domain name.”)
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied, and thus relief cannot be granted.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <troutunlimited.org> domain name REMAIN WITH Respondent.
Sandra J. Franklin, Panelist
Dated: July 26, 2011
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