Sterling International, Inc. v. Neogain Limited
Claim Number: FA1301001479440
Complainant is Sterling International, Inc. (“Complainant”), represented by Alina S. Morris of Christensen O'Connor Johnson Kindness, PLLC, Washington, USA. Respondent is Neogain Limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rescueflytrap.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2013; the National Arbitration Forum received payment on January 9, 2013.
On January 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <rescueflytrap.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2013 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@rescueflytrap.com. Also on January 10, 2013, 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 February 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the RESCUE mark. Respondent’s domain name is confusingly similar to Complainant’s RESCUE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <rescueflytrap.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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, Sterling International, Inc., argues that it owns the trademark RESCUE in connection with pest control traps; insect traps; repellants for insects; arachnids and animals; biopesticides for domestic use; insect attracts for use in pest control; industrial, agricultural, commercial, and residential pest control services for others, namely, the selection, implementation, and use of pest control technology; providing online information in the field of pest control; and design and development of pest control technology. Complainant asserts that it has registered the domain <rescue.com> and uses it to host its primary business website. Complainant provides evidence that it owns trademark registrations with the USPTO for its RESCUE mark (e.g., Reg. No. 2,593,319, registered July 16, 2002). Complainant contends and also provides evidence that it owns trademark registrations with the OHIM for the RESCUE mark (Reg. No. 1,113,471, registered January 25, 2012). As Respondent appears to reside in the United Kingdom, Complainant’s registrations of the RESCUE mark with the USPTO and OHIM are sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)).
Complainant asserts that Respondent’s <rescueflytrap.com> domain name is confusingly similar to Complainant’s RESCUE mark as it adds the generic term “flytrap.” Complainant contends that the term “flytrap” is generic, describing the products for which Complainant’s RESCUE marks are registered. The addition of a descriptive term is not sufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Furthermore, the addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See 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”). Accordingly, the Panel finds that Respondent’s <rescueflytrap.com> domain name is confusingly similar to Complainant’s RESCUE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <rescueflytrap.com> domain name. Complainant contends that Respondent is primarily known as “Neogain Limited” and secondarily known as “FliTrap” or “FliTrap Direct,” but is not known as “Rescue FlyTrap” or any other business name incorporating the term RESCUE. Respondent does not provide any evidence that it is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to 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).
Complainant argues that Respondent is using the <rescueflytrap.com> domain name commercially, to advertise Respondent’s FLITRAP product and to direct consumers to Respondent’s <flitrapdirect.com> domain name. Complainant contends that Respondent uses the disputed domain to operate a website that links to its primary business website to sell goods directly competitive with Complainant’s goods. Respondent’s disputed domain name does, in fact, resolve to a website that sells fly traps. Further, Complainant asserts that Respondent’s website uses the same color scheme, green with yellow accents with white as a background to the text. Complainant contends that consumers encountering Respondent’s website, with the identical color scheme, are likely to think that Respondent’s website is related to or sponsored by Complainant, when it is not. Complainant argues that Respondent attempts to pass itself off as related to Complainant by using Complainant’s RESCUE mark, and by using its distinguishing colors on its own website. Respondent’s use of the disputed domain name to attempt to offer competing goods and services or to pass itself off as Complainant is 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). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <rescueflytrap.com> domain name primarily for the purpose of disrupting Complainant’s business. Complainant argues that the primary content on Respondent’s website includes information on Respondent’s own products (which compete with those of Complainant) and links to Respondent’s own products and main e-commerce website. Respondent’s use of the disputed domain name to provide information on its own competing products disrupts Complainant’s business, showing bad faith and evidence 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).”).
Complainant argues that Respondent uses the <rescueflytrap.com> domain name to attract visitors for commercial gain by creating a likelihood of confusion with Complainant’s RESCUE mark. Complainant asserts that Respondent’s disputed domain name resolves to a website that is directly competitive with Complainant, and subsequently directs consumers to Respondent’s main website selling products identical to those of Complainant. Respondent’s disputed domain name resolves to a website that sells fly traps. Respondent’s use of the disputed domain name to advertise its own competing products evidences bad faith use and registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant contends that Respondent had notice of Complainant’s rights in the RESCUE mark. Complainant asserts that the link between Complainant’s RESCUE mark and Respondent’s <rescueflytrap.com> domain name and the identical nature of the goods advertised on the respective websites is obvious. The Panel finds that, due to the identical nature of the goods advertised on Respondent’s website, Respondent had actual knowledge of Complainant’s mark and Complainant's rights. Therefore, the Panel holds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rescueflytrap.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 11, 2013
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