Guardair Corporation v. Pablo Palermo
Claim Number: FA1407001571060
Complainant is Guardair Corporation (“Complainant”), represented by Donald S. Holland of Holland & Bonzagni, P.C., Massachusetts, USA. Respondent is Pablo Palermo (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guardair.com>, which has been registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 22, 2014; the National Arbitration Forum received payment on July 25, 2014.
On July 27, 2014, Fabulous.com Pty Ltd confirmed by e-mail message addres-sed to the National Arbitration Forum that the <guardair.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current reg-istrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@guardair.com. Also on July 29, 2014, 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 August 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 holds a registration for the GUARDAIR trademark, which is on file with the United States Patent and Trademark Office ("USPTO") (as Registry No. 1,018,713, registered August 26, 1975).
Complainant uses the GUARDAIR mark in connection with the marketing of blow guns used to remove chips and foreign matter from work pieces.
Respondent registered the disputed <guardair.com> domain name on February 25, 1998.
The domain name is substantively identical to Complainant’s GUARDAIR mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent’s use of the GUARDAIR mark.
Respondent uses the disputed domain name to advertise links to the websites of third parties unrelated to Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s employment of the domain name misleads Internet users as to the possibility of an affiliation between Complainant and the domain name.
Respondent seeks to profit commercially from the confusion caused by its use of the domain name.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the GUARDAIR trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfies the requirement of Policy ¶ 4(a)(i) that a UDRP complainant have rights in a mark in order to advance a claim that a domain name is identical or confusingly similar to that mark).
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Peru). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demon-strate rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <guardair.com> domain name is substantively identical to Complainant’s GUARDAIR trademark. The domain name incorporates the entire mark, with only the addition of the generic top-level domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save the do-main name from the realm of identity or confusing similarity under the standards of the Policy. This is because a gTLD is irrelevant to an identity or confusing similarity analysis because a TLD is required of all domain names. See, for example, Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a UDRP complainant’s POMELLATO mark be-cause the appearance of the generic top-level domain (gTLD) “.com” after the mark is not relevant to an analysis conducted under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name and that Complainant has not authorized Respondent’s use of the GUARDAIR mark. Moreover, the WHOIS record for the <guardair.com> domain name identifies the registrant only as “Pablo Palermo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the <guardair.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel there finding no rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) where there was no association between a respondent and the mark of a UDRP complainant and where there was no evidence in the record showing that that respondent had ever been commonly known by a disputed domain name.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <guardair.com> domain name to advertise links to the websites of third parties from the operation of which links Respondent seeks to profit commercially. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(i). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that a respondent’s use of a disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <guardair.com> domain name as alleged in the Complaint demonstrates an attempt by Respondent to mislead Internet users as to the possibility of an affiliation between Complainant and the domain name, and that Respondent seeks to profit from the resulting confusion. Under Policy ¶ 4(b)(iv), this stands as evidence of Respondent’s bad faith in the registration and use of the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent’s registration and use of a domain name which was confusingly similar to the mark of another to display links to various third-party websites for profit demonstrated bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <guardair.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 28, 2014
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