NETGEAR, Inc. v. Ultimate Storage Limited
Claim Number: FA1201001422587
Complainant is NETGEAR, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, Washington, USA. Respondent is Ultimate Storage Limited (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netgearstore.com>, registered with Tucows, 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 January 4, 2012; the National Arbitration Forum received payment on January 5, 2012.
On January 5, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <netgearstore.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2012 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@netgearstore.com. Also on January 6, 2012, 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 January 30, 2012, 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 <netgearstore.com> domain name is confusingly similar to Complainant’s NETGEAR mark.
2. Respondent does not have any rights or legitimate interests in the <netgearstore.com> domain name.
3. Respondent registered and used the <netgearstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Netgear, Inc. sells consumer electronics, including computer hardware. Complainant owns the NETGEAR trademark with the United States Patent & Trademark Office (“USPTO”) for its NETGEAR mark (e.g. Reg. No. 2,124,219 registered December 23, 1997).
Respondent, Ultimate Storage Limited, registered the <netgearstore.com> domain name on May 23, 2008. Respondent’s domain name resolves to a website that displays products and information relating to Respondent’s competing electronics 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.
Complainant owns the trademark registration with the USPTO for its NETGEAR mark (e.g. Reg. No. 2,124,219 registered December 23, 1997). The Panel finds that Complainant established rights in the NETGEAR mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel further finds that trademark registration is not required to be in the country where Respondent resides or operates for the purposes of Policy ¶ 4(a)(i). 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that the disputed domain name <netgearstore.com> is confusingly similar to its NETGEAR mark. Complainant contends that adding the generic word “store” to the mark, and adding the generic top-level domain (“gTLD”) “.com” does not adequately differentiate the domain name from the mark and instead creates an unauthorized association with Complainant. The Panel finds that adding a generic word and adding the gTLD “.com” does not sufficiently distinguish the <netgearstore.com> domain name from the NETGEAR mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel thus concludes that Respondent’s <netgearstore.com> domain name is confusingly similar to Complainant’s NETGEAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent has no rights or legitimate interests in the <netgearstore.com> domain name. Policy ¶ 4(a)(ii) requires Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the domain name. After Complainant has satisfied this requirement, the burden then shifts to Respondent to show why it does have rights or interests in the domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel determines that Complainant has shown a prima facie case. Because Respondent failed to reply to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). However, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <netgearstore.com> domain name, nor is Respondent licensed or otherwise permitted by Complainant to use the NETGEAR mark. The WHOIS information lists Respondent as “ULTIMATE STORAGE LIMITED,” which does not indicate that Respondent is commonly known by the disputed domain name. The Panel concludes that without conclusive evidence that Respondent is commonly known by the disputed domain name, Respondent lacks any rights or legitimate interests in the name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant submits factual allegations that the Panel determines constitutes competing use, indicating that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). The <netgearstore.com> domain name redirects Internet traffic to a website that offers Respondent’s products for sale. Complainant contends that Respondent takes advantage of the goodwill and reputation of the NETGEAR mark to lure consumers to its website to make sales. Further, Respondent uses the domain name to profit from its own sale of similar goods, which does not amount to a bona fide offering of goods and services. The Panel concludes that Respondent’s use of the disputed domain name to redirect Internet traffic to its website for commercial profit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel notes that Complainant does not address bad faith registration and use under Policy ¶ 4(b)(iii), but, as evidenced by the screenshots of the resolving website, Respondent’s use of the <netgearstore.com> domain name constitutes a disruption to Complainant’s business. The website offers products that are similar or identical to Complainant’s products and directs visitors away from Complainant’s website. The Panel concludes that misdirecting Internet users from Complainant’s website to a website offering competing products or services constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant argues that Respondent’s use of the disputed domain name to intentionally divert Internet traffic to its own website for commercial profit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant argues that the <netgearstore.com> domain name creates uncertainty as to the association between Complainant’s NETGEAR mark and the disputed domain name. Complainant asserts that Respondent accordingly profits because consumers seeking products from Complainant’s website will instead find themselves at Respondent’s website, viewing similar products. Complainant contends that Respondent capitalizes on the apparent association with Complainant’s NETGEAR mark by using a confusingly similar name, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). The Panel concludes that Respondent’s use of the disputed domain name to attract Internet users, confuse consumers, and commercially benefit from the misdirection is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <netgearstore.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 31, 2012
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