Melli Yellowpages, Inc. v. Import& Export / Ahmad Shah
Claim Number: FA1109001409265
Complainant is Melli Yellowpages, Inc. (“Complainant”), represented by Reid Dammann of Musick, Peeler & Garrett LLP, California, USA. Respondent is Import& Export / Ahmad Shah (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <5050100.com>, registered with eNom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2011; the National Arbitration Forum received payment on September 27, 2011.
On September 27, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <5050100.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 September 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@5050100.com. Also on September 30, 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 October 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <5050100.com> domain name is identical to Complainant’s 50 50 100 mark.
2. Respondent does not have any rights or legitimate interests in the <5050100.com> domain name.
3. Respondent registered and used the <5050100.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Melli Yellowpages, Inc., is a provider of telephone directory assistance, information services, and related advertising. Complainant argues that it has used the 50 50 100 mark in connection with these services since 1995 and has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,014,718 filed May 25, 2010; registered August 23, 2011).
Respondent registered the <5050100.com> domain name on August 25,
2002. The disputed domain name resolves to a website featuring Complainant’s 50
50 100 mark prominently without offering any other services or goods. The
resolving website also contains numerous advertising links to various
third-party websites, including some competitors of Complainant.
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 asserts that it has a trademark registration for the 50 50 100 mark with the USPTO (Reg. No. 4,014,718 filed May 25, 2010; registered August 23, 2011). The Panel finds that this trademark registration is sufficient to prove Complainant’s rights in the 50 50 100 mark under Policy ¶ 4(a)(i), dating back to the filing date of the trademark registration. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); 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). The Panel also determines that this USPTO trademark registration is conclusive evidence of Complainant’s rights, despite that Respondent lives or operates in Afghanistan and not the U.S. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges and provides a declaration of its President stating that it has been using the 50 50 100 mark in association with its telephone directory assistance and information services since at least July 1, 1995. See Complainant’s Exhibit B. Complainant also asserts that it has spent over $500,000 in the U.S. alone in advertising and marketing programs and other services bearing the 50 50 100 mark. Complainant contends this advertising and promotion of the mark has been on the Internet, television stations, magazines, and newspapers. See Complainant’s Exhibit B. Additionally, Complainant’s first use in commerce date listed on its trademark registration is July 1, 1995. Based on these allegations and the supporting declaration from its President, the Panel concludes that Complainant has shown continuous use and the acquisition of secondary meaning sufficient to establish common law rights in the mark under Policy ¶ 4(a)(i), dating back to 1995. See 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); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <5050100.com> domain name is identical to Complainant’s 50 50 100 mark as the only differences are the removal of the spaces and the addition of the generic top-level domain (“gTLD”) “.com.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), panels determined that since spaces are not allowed in domain names and a gTLD is required, those changes do not prevent a disputed domain name from being deemed identical to a mark. The Panel thus concludes that Respondent’s <5050100.com> domain name is identical to Complainant’s 50 50 100 mark according to Policy ¶ 4(a)(i).
The Panel thus holds that Policy ¶ 4(a)(i) has been satisfied.
In alleging that Respondent lacks rights and legitimate interests in the disputed domain name, Complainant must meet the requirements of Policy ¶ 4(a)(ii) and present a prima facie case against Respondent. As Complainant has satisfied this obligation, the burden shifted to Respondent, who has failed to present a Response. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). Without any contentions or evidence supporting rights and legitimate interests for Respondent, the Panel may infer that Respondent does not possess rights and legitimate interests. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will continue its analysis of the evidence using the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant contends that Respondent also lacks authorization from Complainant to use the disputed domain name and is not an agent or licensee of Complainant. The WHOIS information for the disputed domain name identifies the registrant as “Import& Export / Ahmad Shah,” which reveals no nominal association with the <5050100.com> domain name. In accord with prior cases, the Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests under Policy ¶ 4(c)(ii). 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s resolving website at the <5050100.com> domain name prominently displays Complainant’s mark while advertising third-party websites, including competitors, in the form of pay-per-click links. The Panel holds that misappropriating Complainant’s mark to advertise competitors and profit from pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); 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)).
The Panel thus holds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent uses the <5050100.com> domain name to host a website that displays Complainant’s mark prominently and features numerous pay-per-click links that openly advertise Complainant’s competitors. The Panel finds that using Complainant’s mark in the disputed domain name to advertise and promote competitors disrupts Complainant’s business and shows bad faith registration and use according to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant alleges that Respondent uses the <5050100.com> domain name containing Complainant’s mark and displays the mark on the resolving website to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant argues that Respondent features many links for competing websites on the resolving website. The Panel presumes that these links are pay-per-click links that generate profit for Respondent when clicked. Based on Respondent’s efforts to attract and mislead consumers using Complainant’s mark for commercial gain, the Panel finds that Respondent has shown bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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)(iv) 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).
The Panel thus holds 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 <5050100.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 31, 2011
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