New America Network, Inc. d/b/a NAI and NAI Global v. Caffeinated Computer Consulting Inc
Claim Number: FA1209001463439
Complainant is New America Network, Inc. d/b/a NAI and NAI Global (“Complainant”), represented by Nancy Rubner Frandsen, Pennsylvania, USA. Respondent is Caffeinated Computer Consulting Inc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naicalgary.com>, registered with Network Solutions, LLC.
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 September 19, 2012; the National Arbitration Forum received payment on September 19, 2012.
On September 20, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <naicalgary.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@naicalgary.com. Also on September 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 18, 2012, 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.
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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding.
A. Complainant makes the following assertions:
1. Respondent’s <naicalgary.com> domain name is confusingly similar to Complainant’s NAI mark.
2. Respondent does not have any rights or legitimate interests in the <naicalgary.com> domain name.
3. Respondent registered or used the <naicalgary.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns trademark registrations for its NAI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,199,582 registered October 27, 1998).
2. Complainant also owns trademark registrations with numerous other government authorities in countries around the world, including with Canada.
3. Complainant has used its mark since March of 1997 in its business in real estate services.
4. Complainant own several domain names in connection with its services, including <naiglobal.com>, <naidirect.com>, and <naiweb.com>.
5. Respondent registered the <naicalgary.com> domain name on September 5, 2012.
6. Respondent was at one time licensed to use the NAI mark under a franchise agreement.
7. Complainant later terminated the business relationship with Respondent and ordered Respondent to cease use of its NAI marks, with which Respondent did not comply.
8. The <naicalgary.com> domain name is confusingly similar to Complainant’s NAI mark.
9. The disputed domain name resolves to a website that claims to offer real estate and brokerage services for various properties.
10. Respondent’s use of the disputed domain name causes Internet users confusion and a mistaken belief that Respondent is associated with Complainant.
11. The activity on Respondent’s resolving website competes with the services offered by Complainant at its website.
12. Respondent was put on actual and constructive notice of Complainant’s rights in the mark at the time Respondent registered the <naicalgary.com> domain name.
13. Respondent unfairly benefits by taking advantage of the goodwill associated with Complainant NAI mark, which demonstrates bad faith registration and use.
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."
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.
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.”).
Complainant asserts rights in its NAI mark under Policy ¶ 4(a)(i), claiming that it owns trademark registrations through numerous global trademark authorities, including the USPTO (e.g., Reg. No. 2,199,582 registered October 27, 1998). The Panel notes that Complainant does not give evidence of other trademark registrations, but may nonetheless determine that USPTO registration suffices to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See 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.”). The Panel also finds that even if Complainant does not own trademark registration with Canadian Intellectual Property Office (“CIPO”), Policy ¶ 4(a)(i) does not require Complainant to register its mark in Respondent’s country of residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the NAI mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <naicalgary.com> domain name is confusingly similar to its NAI mark, due to the inclusion of the geographic term “calgary.” The Panel also notes that the domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that including a geographic term and a gTLD do not change the domain name’s confusing similarity to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Based on the analysis above, the Panel determines that Respondent’s <naicalgary.com> domain name is confusingly similar to Complainant’s NAI mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <naicalgary.com> domain name. The Panel notes that the WHOIS information associated with the disputed domain name identifies the registrant as “Caffeinated Computer Consulting Inc.” As a result, the Panel finds that the WHOIS information demonstrates that Respondent is not commonly known by the <naicalgary.com> domain name and concludes that Respondent does not possess rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <naicalgary.com> domain name because the domain name resolves to a website purporting to belong to “Blackstone Commercial,” a real estate website, which Complainant argues is a clear attempt to interfere with Complainant’s mark and capitalize on the goodwill associated with the mark. Considering that Complainant uses the NAI mark for services in the real estate industry, Respondent’s use of the disputed domain name in connection with a website offering real estate services makes Respondent a competitor of Complainant. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), stated that by using the domain name to sell goods in competition with the complainant, the respondent’s actions did not give rise to any legitimate interests in the domain name. The Panel concludes that Respondent’s attempt to sell competing real estate services does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <naicalgary.com> domain name as outlined in Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant alleges that even if Respondent had plans to develop a legitimate business, it cannot claim rights to the <naicalgary.com> domain name at a later time. Complainant states in its “Communications between the Parties” section that Respondent was formerly a franchisee of Complainant, and was ordered to discontinue use of Complainant’s NAI mark, but Respondent continued to use the disputed domain name. The Panel determines that Respondent cannot claim rights or legitimate interests in the <naicalgary.com> domain name after an agreement with its licensor is terminated. See Nasaco Elecs. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent, who has since made no use of the domain name).
Complainant alleges that Respondent registered and uses the <naicalgary.com> domain name in a way that diverts Internet traffic from Complainant’s website and to Respondent’s, benefitting from consumers’ confusion. Complainant notes that Respondent uses the disputed domain name to market competing real estate services to Internet users. The panel in Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), stated that the respondent was engaged in bad faith registration and use because it used the disputed domain name to sell services that targeted the complainant’s market. The Panel concludes that Respondent attempts to divert Complainant’s potential customers by using a confusingly similar domain name and making a profit by selling competing real estate services, which the Panel finds establishes Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent was on notice of Complainant’s NAI marks when Respondent registered the <naicalgary.com> domain name. Complainant contends that Respondent had both actual and constructive notice of Complainant’s rights and interests in the NAI mark. Despite Complainant’s assertion that Respondent had constructive knowledge based on the federal registrations for the NAI mark owned by Complainant, the Panel concludes that constructive knowledge alone does not give rise to a finding of bad faith registration under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds that Respondent had actual notice of Complainant’s rights in the <naicalgary.com> domain name because of the confusing similarity of the domain name to Complainant’s mark, as well as the competing use of the resolving website with Complainant’s services, and concludes that Respondent’s registration of the <naicalgary.com> domain name was in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant alleges in its “Communications between the Parties” section that Respondent continues to use the <naicalgary.com> domain name, despite an order to cease use of all NAI marks after termination of the business relationship between Complainant and Respondent. The Panel concludes that Respondent’s continued use of the disputed domain name to offer hyperlinks to competing entities despite orders to suspend use of Complainant’s mark is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding bad faith use and registration where a disgruntled former employee registered an infringing domain name to open an online business that competed with the complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <naicalgary.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: 10/31/12
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