Nissan North America, Inc. v. ICS INC.
Claim Number: FA1310001526623
Complainant is Nissan North America, Inc. (“Complainant”), represented by Micol Cecchi, Tennessee, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infinitusa.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.
On October 25, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <infinitusa.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 October 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@infinitusa.com. Also on October 28, 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 November 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
1. Complainant is the sole U.S. distributor of Infiniti vehicles, parts, and accessories.
2. Complainant is one of the largest and most well-known automakers in the world.
3. Complainant has registered the INFINITI mark with the United States Patent and Trademark Office (“USPTO”) as well as with the Canadian Intellectual Property Office (“CIPO”).
a. USPTO:
i. Reg. No. 1,478,618 registered March 1, 1988.
ii. Reg. No. 1,621,098 registered November 6, 1990.
iii. Reg. No. 1,625,201 registered November 27, 1990.
iv. Reg. No. 2,160,715 registered May 26, 1998.
b. CIPO:
i. Reg. No. TMA344,064 registered August 26, 1988.
ii. Reg. No. TMA442,951 registered May 12, 1995.
4. Complainant has registered and uses the <infiniti.com> and <infinitiusa.com> domain names.
a. <infiniti.com> was registered on January 9, 1995.
b. <infinitiusa.com> was registered on September 11, 2002.
5. Respondent’s <infinitusa.com> domain name is confusingly similar to Complainant’s INFINITI mark.
6. Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not connected or affiliated with Complainant in any way.
c. Respondent does not use the disputed domain name for a bona fide offering of goods or services or for a noncommercial or fair use.
i. Respondent’s disputed domain name redirects users to a website featuring links to other commercial services.
ii. Respondent’s disputed domain name redirects users to a full screen advertisement for a pornographic site called <ashleymadison.com>.
iii. Respondent’s disputed domain name also redirects to destination sites providing links to automotive goods and services, including competitors of Complainant.
d. Respondent has registered and is using the <infinitusa.com> domain name in bad faith.
i. Respondent uses the disputed domain name to resolve to a website displaying sponsored third-party links to sites that offer products and services that compete with Complainant, thus disrupting Complainant’s business.
ii. Respondent has registered and is using the disputed domain name to intentionally attract for commercial gain, Internet users to Respondent’s website and other online locations, by creating a likelihood of confusion with Complainant’s mark.
iii. Respondent financially profits from the click-through fees generated when Internet users click on the links provided on the website.
iv. Respondent uses the disputed domain name to advertise adult-oriented sites.
v. Respondent has engaged in typosquatting behavior in bad faith.
vi. Respondent had notice of Complainant and its mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Nissan North America, Inc. of Franklin, TN, USA. Complainant is the owner of domestic and international registrations for the mark INFINITI and related marks which it uses in connection with the sale and servicing of automobiles and structural parts. Complainant has used the mark continuously since at least as early as 1988 both in real space and in cyberspace at its official websites <infiniti.com> and <infinitiusa.com>.
Respondent is ICS, Inc. of Grand Cayman, Cayman Islands.
Respondent’s registrar’s address is listed as Toronto, Ontario, Canada. Respondent registered the disputed domain name on or about September 12, 2008.
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 states that it is the sole U.S. distributor of Infiniti vehicles, parts, and accessories. Complainant contends that it is one of the largest and most well-known automakers in the world. Complainant provides evidence of its registrations for the INFINITI mark with the USPTO as well as with the CIPO:
USPTO
Reg. No. 1,478,618 registered March 1, 1988.
Reg. No. 1,621,098 registered November 6, 1990.
Reg. No. 1,625,201 registered November 27, 1990.
Reg. No. 2,160,715 registered May 26, 1998.
CIPO
Reg. No. TMA344,064 registered August 26, 1988.
Reg. No. TMA442,951 registered May 12, 1995.
Complainant also claims to have registered and used the <infiniti.com> and <infinitiusa.com> domain names, having registered the <infiniti.com> domain name on January 9, 1995 and the <infinitiusa.com> domain name on September 11, 2002. Previous panels have found that providing evidence of a registration with the USPTO or CIPO is sufficient to establish rights in a given mark. See Dixie Consumer Prods. LLC v. Private Whois dixiecup.com, FA 1419529 (Nat. Arb. Forum Jan. 27, 2012) (finding that complainant’s trademark registrations with a number of trademark authorities around the world, including with the CIPO and USPTO, “successfully proves a complainant has rights in a mark . . .”). The Panel here also notes that it is irrelevant whether a complainant registers a mark in the country in which respondent does business. 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). The Panel finds that Complainant has rights in the INFINITI mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <infinitusa.com> domain name is confusingly similar to Complainant’s INFINITI mark. Complainant states that Respondent adds the geographical descriptor, “USA” to its mark. Previous panels have found that adding a geographic locator to a complainant’s mark does not overcome a finding of confusingly similar under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Complainant also contends that Respondent misspells Complainant’s INFINITI mark by eliminating the final “i.” Complainant further argues that Respondent adds the generic top-level domain (“gTLD”) “.com.” Previous UDRP panels have found that adding gTLDs and eliminating a single letter in a complainat’s mark is insufficient to differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”)). The Panel here finds that Respondent’s <infinitusa.com> domain name is confusingly similar to Complainant’s INFINITI mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant claims that neither the WHOIS record nor any other evidence indicates that Respondent is known as the disputed domain name. Complainant states that the WHOIS information identifies the registrant of the disputed domain name as ”ICS INC.” Complainant contends that it has never authorized, licensed, or permitted Respondent to use the INFINITI mark. Previous panels have found that a respondent is not commonly known by a domain name where there is no indication on the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. 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). The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant contends that Respondent’s disputed domain name redirects Internet users to a site featuring a full-screen advertisement for an adult-oriented site called AshleyMadison.com. See Annex F. The Panel notes that previous UDRP panels have found that using a confusingly similar domain name to resolve to a website featuring adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers). The Panel here finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent’s use of the domain as outlined above does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant argues that Respondent’s disputed domain name alternatively redirects Internet users to third-party sites for Complainant’s competitors. The Panel notes that some of the links featured on the additional resolving websites include, “Infiniti M Official Site,” “Nissan Clearance 2013,” “Nissan Sale: New & Used,” and “Infiniti Blowout Sale.” See Annex G. Complainant contends that Respondent seeks to generate click-through revenue from Internet users who make a typographical error while searching for Complainant’s legitimate business. Previous panels have found that using a disputed domain name to resolve to a website featuring pay-per-click links that compete with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has engaged in typosquatting behavior. Complainant contends that Respondent’s <infinitusa.com> domain name is a misspelled version of Complainant’s INFINITI mark. Previous panels have found that typosquatting behavior indicates that a respondent has no rights or legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel here finds that Respondent has engaged in typosquatting behavior under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet his burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has registered and is using the <infinitusa.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant states that Respondent’s disputed domain name resolves to a website displaying third-party links to sites that offer products and services that compete with Complainant. Complainant contends that the links on Respondent’s website redirect Internet users to car insurance sites or direct competitors of Complainant. See Annex G. Complainant argues that this use may divert customers away from Complainant’s products and may result in a customer purchasing a vehicle or automotive-related service from one of Complainant’s competitors instead of Complainant. Previous panels have found that using a confusingly similar domain name to resolve to a website providing pay-per-click links that compete with a complainant’s business disrupts a complainant’s business in bad faith. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has registered and is using the <infinitusa.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant contends that Respondent has registered and is using the disputed domain name to intentionally attract for commercial gain, Internet users to Respondent’s website and other online locations, by creating a likelihood of confusion with Complainant’s mark. Complainant again argues that Respondent is using the disputed domain name to offer links to third-party websites in order to receive click-through fees. As noted above, previous panels have found that using a confusingly similar domain name to provide links to a complainant’s competitors where a respondent presumably commercially gains from the misleading domain name, indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s use of the disputed domain name to resolve to a website with adult-oriented content indicates bad faith use and registration. Complainant claims that the disputed domain name resolves to a website advertising the adult-oriented site AshleyMadison.com. See Annex F. Complainant contends that Respondent’s use of the disputed domain name to advertise for an adult-oriented site will seriously tarnish Complainant’s mark. Previous panels have found that using a disputed domain name to resolve to an adult-oriented website indicates bad faith use and registration under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). The Panel here finds that Respondent’s use of the disputed domain name to resolve to a website featuring adult content indicates bad faith under Policy ¶ 4(a)(iii).
Complainant states that Respondent has registered and is using the <infinitusa.com> domain name in bad faith because Respondent’s disputed domain name is a typosquatted version of Complainant’s INFINITI mark. Complainant states that Respondent leaves out the final “I” in INFINITI. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Respondent’s behavior amounts to typosquatting in bad faith under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <infinitusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 4, 2013
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