Ian Schrager v. Satoru Saito / Personal
Claim Number: FA1405001557171
Complainant is Ian Schrager (“Complainant”), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, USA. Respondent is Satoru Saito / Personal (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <i-schrager.biz>, registered with GMO INTERNET, INC. d/b/a ONAMAE.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014. The Complaint was submitted in both English and Japanese.
On May 2, 2014, GMO INTERNET, INC. D/B/A ONAMAE.COM confirmed by e-mail to the National Arbitration Forum that the <i-schrager.biz> domain name is registered with GMO INTERNET, INC. D/B/A ONAMAE.COM and that Respondent is the current registrant of the name. GMO INTERNET, INC. D/B/A ONAMAE.COM has verified that Respondent is bound by the GMO INTERNET, INC. D/B/A ONAMAE.COM 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 May 14, 2014, the Forum served the Japanese Complaint and all Annexes, including a Japanese Written Notice of the Complaint, setting a deadline of June 3, 2014 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@i-schrager.biz. Also on May 14, 2014, the Japanese 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 June 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the IAN SCHRAGER mark for purposes of real estate development.
Complainant registered the IAN SCHRAGER mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,421,787).
The domain name at issue is <i-schrager.biz> and it is confusingly similar to the IAN SCHRAGER mark. Respondent has merely added the generic top-level domain ("gTLD") “.biz,” a hyphen, and altered the mark by shortening it.
Respondent has no rights or legitimate interests in this <i-schrager.biz> domain name. Respondent has not been commonly known as the <i-schrager.biz> domain name. Complainant has not otherwise licensed Respondent’s use of the mark. Respondent’s use of the domain name is not otherwise bona fide as it is merely a parked website.
Respondent has acted in bad faith. First, Respondent’s use of the <i‑schrager.biz> domain name disrupts Complainant’s business. Second, Respondent is capitalizing on the likelihood Internet users who visit the <i‑schrager.biz> domain name will associate it with Complainant.
Finally, Respondent is held to constructive and actual notice of Complainant’s rights in the IAN SCHRAGER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the IAN SCHRAGER mark through registration of the mark with the USPTO.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the IAN SCHRAGER mark.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent uses the <i-schrager.biz> domain name to address parking page.
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.”).
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark rights in the IAN SCHRAGER mark through its registration thereof with the USPTO. It is irrelevant that Respondent may operate outside the jurisdiction of the trademark registrar. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); 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).
Respondent’s at-issue domain name replaces the first term of Complainant’s IAN SCHRAGER trademark with “i-“, adds the second term of the mark, “SCHRAGER” and appends the generic top level domain name “.biz” thereto. The leading “i” is an initial for the first term of Complainant’s mark. The hypen is irrelevant to the Panel’s analysis, as is the addition of the necessary top level domain name. Since the differences between the domain name and Complainant’s trademark fail to materially distinguish one from the other for the purposes of Policy ¶4(a)(i), the Panel concludes that Respondent’s <i-schrager.biz> domain name is confusingly similar to Complainant’s IAN SCHRAGER trademark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Satoru Saito/Personal” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <i-schrager.biz> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the at-issue domain name merely as a parked website or parking page. Parked websites or hyperlink advertisements are generally not evidence of either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent is capitalizing on the likelihood that Internet users who visit the <i‑schrager.biz> webpage will associate it with Complainant. On the webpage addressed by the at-issue domain name, Respondent promotes, among other things, the “VALUE DOMAIN” website. Therefore, the Panel finds that Respondent’s use of the domain name demonstrates bad faith pursuant to Policy ¶4(b)(iv). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also, AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Furthermore, Respondent had knowledge of Complainant’s IAN SCHRAGER mark prior to registering the <i-schrager.biz> domain name. The Panel reaches this conclusion in light of the striking similarity between Respondent’s domain name and Complainant’s unique trademark. Respondent’s prior knowledge of Complainant’s trademark demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <i-schrager.biz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 12, 2014
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