TeraFlex, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1301001482653
Complainant is TeraFlex, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teraflex.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 29, 2013; the National Arbitration Forum received payment January 29, 2013.
On February 4, 2013, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <teraflex.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@teraflex.com. Also on February 6, 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 March 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Complainant owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) in the TERAFLEX mark (Reg. No. 2,218,244 registered Jan. 19, 1999).
ii. Respondent registered the <teraflex.com> domain name on March 6, 2001.
iii. The disputed domain name contains Complainants exact mark in its entirety.
iv. The only addition to the mark in the domain name is the generic top-level domain (“gTLD”) “.com,” which is irrelevant to a Policy ¶ 4(a)(i) analysis.
i. By attempting to divert Internet users to its website for its own commercial gain, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
ii. Complainant never authorized, licensed, or otherwise permitted Respondent to use its mark or associate with the company in any way.
i. Respondent has repeatedly offered to sell the disputed domain name to Complainant, most recently for $25,000.
ii. Respondent has been making only passive use of the disputed domain name, which resolves to a generic landing page containing third-party links to Complainant’s competitors.
iii. Respondent is attempting to attract users to its domain name for commercial gain by causing confusion with Complainant’s TERAFLEX mark.
iv. Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
Complainant established that it has rights in the mark contained within the disputed domain name.
The disputed domain name is identical to a mark in which Complainant has exclusive rights.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant claims rights in the TERAFLEX trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (Reg. No. 2,218,244 registered Jan. 19, 1999). See Complainant Annex B. The Panel notes that a complainant’s registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Further, the Panel notes that a complainant does not need to own a trademark registration in the country of a respondent in order to establish rights in its mark under 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant established rights in the TERAFLEX mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.
Complainant argues that Respondent’s <teraflex.com> name is identical to Complainant’s TERAFLEX mark, pursuant to Policy ¶ 4(a)(i). Complainant notes that the disputed domain name contains Complainant’s mark unaltered and in its entirety, with only the addition of the gTLD “.com”. The Panel notes that addition of gTLDs is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Accordingly, the Panel finds that Respondent’s <teraflex.com> domain name is identical to Complainant’s TERAFLEX mark, meeting the elements of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 it has not authorized or licensed the use of its TERAFLEX mark to Respondents. The Panel notes that a lack of authorization is evidence to support a finding that a Respondent is not commonly known by a disputed domain. The Panel also notes that the WHOIS information for the <teraflex.com> domain name shows “Privacy Ltd. Disclosed Agent for YOLAPT” as the domain name registrant. A lack of authorization combined with unsupportive WHOIS documentation is strong evidence that a Respondent is not commonly known by a disputed domain name. The Panel here so finds; Respondent has not established rights or legitimate interests under 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 also claims that Respondent has not established rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by making a bona fide offering of goods or services or a legitimate noncommercial or fair use with the disputed domain name. Complainant argues that, by resolving the disputed domain name to a generic web page with links to Complainant’s competitors, Respondent is diverting Internet users for its own commercial gain. See Complainant Annex F. The Panel notes that such diversionary tactics demonstrate a lack of a bona fide offering or legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore this Panel finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(i) or 4(c)(iii) in the <teraflex.com> domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant also asserts that Respondent registered and used the disputed domain name in bad faith. As evidence of bad faith registration and use, Complainant urges that Respondent repeatedly has offered to sell the disputed domain name to Complainant, most recently for $25,000. Although the Panel notes that Complainant did not corroborate this claim with extrinsic evidence of such offers, the Panel finds the claim persuasive in the absence of any denial by Respondent. Such offers may support findings of bad faith under Policy ¶ 4(b)(i), See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Complainant also alleges that Respondent is using the <teraflex.com> domain name to divert Internet users to its website, which displays links to Complainant’s competitors, through which Respondent derives click-through revenue. The Panel notes that the use of competing links for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore the Panel finds that Complainant has demonstrated evidence under Policy ¶ 4(b)(iv) that Respondent registered and is using the disputed domain name in bad faith.
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the TERAFLEX mark. Complainant argues that Respondent's use of a privacy guard, links to competing websites, and offer to sell the disputed domain name to Complainant indicates that Respondent had actual knowledge of Complainant's mark and rights. Although constructive notice is not sufficient to support a finding of bad faith, the Panel here finds that Respondent’s use established that Respondent had actual knowledge of Complainant's mark and rights and therefore the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <teraflex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 15, 2013
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