Nextdoor.com, Inc. v. DAVID PRO
Claim Number: FA1408001575104
Complainant is Nextdoor.com, Inc. (“Complainant”), represented by Shabnam Malek of Cobalt LLP, California, USA. Respondent is DAVID PRO (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ournextdoor.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 18, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ournextdoor.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 August 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@ournextdoor.com. Also on August 18, 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.
A timely Response was received and determined to be complete on September 8, 2014.
An Additional Submission that complies with Supplemental Rule 7 was received on September 15, 2014.
On September 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant uses the NEXTDOOR mark to offer users a private social network to develop community within their neighborhoods. Complainant holds trademark applications with numerous trademark agencies worldwide including the United States Patent and Trademark Office ("USPTO") and the Canadian Intellectual Property Office (“CIPO”). Complainant has a European CTM trademark registration (Reg. No. 10,182,715 registered September 14, 2013). Complainant has acquired common law rights in the NEXTDOOR mark through continuous and extensive use of the mark. Complainant has used the mark since 2010, and operates from the website <nextdoor.com>. Complainant has users in all fifty United States. Complainant has spent millions of dollars in marketing and promoting the mark such that it has garnered substantial goodwill. The <ournextdoor.com> domain name is confusingly similar to the NEXTDOOR mark as the additions of the generic term “our” and the generic top-level domain “.com” are inconsequential.
Policy ¶ 4(a)(ii)
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name. Complainant has not authorized Respondent’s use of the mark. Respondent uses the disputed domain name to promote neighborhood and social networking services to Singapore residents.
Policy ¶ 4(a)(iii)
The disputed domain name was registered and is being used in bad faith. Respondent is using the disputed domain name to operate a fully infringing and competitive website. Large portions of the resolving pages are blatant copies of Complainant’s own website. Respondent knew, or should have known, of Complainant’s rights in the mark at the time of registration.
B. Respondent
Policy ¶ 4(a)(i)
Complainant lacks rights in the NEXTDOOR mark. Complainant has been refused provisional protection by Singapore, the Republic of Korea, Japan, Syria, and Israel. Complainant has failed to show that its rights, if any, extend to the East Asia Region where Respondent operates.
Policy ¶ 4(a)(ii)
Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before notice of this dispute. Respondent has a tangible business plan with requisite financing. Respondent has invested significant time, money, and effort into the development of software associated with the domain name and the domain name’s market presence. Specifically, Respondent has current advertising efforts and has ongoing subscriptions to the products and services associated with the disputed domain name. In addition, Respondent’s business has come to be heavily associated with the term “ournextdoor” in Malaysia. Further, the term “nextdoor” is in no way inherently distinctive.
Policy ¶ 4(a)(iii)
Respondent’s business operation does not draw from Complainant’s reputation. Respondent has engaged in its own effort to invest in and market the disputed domain name. The entirety of Respondent’s website differs from Complainant’s website in terms of design and content.
C. Additional Submissions
Complainant does not have to show that its rights extend to the East Asia Region where Respondent operates and only has to show it has rights somewhere and has a Japanese trademark registration.
Respondent cannot establish rights or legitimate interests in the Disputed Domain because Respondent has used and continues to use the Disputed Domain to operate a service that competes with Complainant and it does not that Respondent claims to have invested substantial resources in developing and marketing the service offered at the Disputed Domain.
It is immaterial that not all of Respondent’s infringing website is an identical copy of Complainant’s. That several material parts of Respondent’s website are identical copies of Complainant’s website demonstrates Respondent had actual knowledge of Complainant’s website and attempted to use Complainant’s good reputation and fame in building his infringing website.
Respondent’s domain is confusing similar to a trademark in which the Complainant has rights. Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent’s use of the mark. The disputed domain name resolves to a website that promotes services in competition with the Complainant. The domain was adopted by Respondent with knowledge of Complainant and copied portions of Complainant’s website.
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.
Complainant uses the NEXTDOOR mark to offer users a private social network to develop community within their neighborhoods. Complainant claims to hold trademark applications with numerous trademark agencies worldwide including the United States Patent and Trademark Office ("USPTO") and the Canadian Intellectual Property Office (“CIPO”). Complainant also claims to have a European CTM trademark registration (Reg. No. 10,182,715 registered September 14, 2013, filed August 8, 2011) administered by the EU’s Office for Harmonization in the Internal Market (“OHIM”), which prior panels have held sufficient for purposes of Policy ¶ 4(a)(i). See Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., D2009-0249 (WIPO June 8, 2009) (finding that Complainant had provided evidence of a trademark registration with the OHIM and had thus established rights in the mark). Accordingly, the Panel concludes that Complainant’s CTM trademark registration is sufficient to demonstrate Complainant’s rights in the NEXTDOOR mark pursuant to Policy ¶ 4(a)(i), regardless of whether Respondent resides within the jurisdiction. 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).
Complainant argues that the <ournextdoor.com> domain name is confusingly similar to the NEXTDOOR mark as the additions of the generic term “our” and the generic top-level domain (“gTLD”) “.com” are inconsequential. In Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012), the panel found that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity. Here, the Panel agrees that the additions of the term “our” and the gTLD “.com” are insufficient under Policy ¶ 4(a)(i) to differentiate the <ournextdoor.com> domain name from the NEXTDOOR mark which is incorporated within the domain at issue.
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); 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 argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name. Further, Complainant has not authorized Respondent’s use of the mark. The Panel notes that the WHOIS record identifies “David Pro” as the registrant. While Respondent claims to have garnered a following in Malaysia under the “our nextdoor” name, the Panel concludes that there is insufficient evidence to demonstrate such an association pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Next, Complainant argues that Respondent uses the disputed domain name to promote competing neighborhood and social networking services to Singapore residents. See Compl., at Attached Ex. E. Prior panels have determined that the use of a confusingly similar domain name to promote services in competition with the complainant does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Furthermore, the Panel notes that Respondent has copied portions of Complainant’s website for use on Respondent’s resolving page. The Panel having compared Respondent’s website with Complainant’s website via Complainant’s Exhibits F and E, agrees that Respondent uses the disputed domain name to promote a neighborhood networking service, which compares to Complainant’s own offerings in nature and/or design, and thus, does not amount to a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant contends that Respondent is using the disputed domain name to operate a fully infringing and competitive website. Prior panels have found evidence of bad faith disruption in such situations. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (in which the panel wrote, “The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). The Panel here agrees that the requisite element of competition is present, so that the Panel finds that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith disruption.
Complainant also argues that Respondent has attempted to mislead users into associating the disputed domain name with Complainant. Complainant urges that large portions of the resolving pages are blatant copies of Complainant’s own website. The Panel has compared the parties websites via Complainant’s Exhibits E and F. After reviewing the similarities between the two websites, the Panel agrees that Respondent’s efforts amount to passing off, and therefore, finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Even if Respondent has not engaged in passing off, Respondent is still in violation of Policy ¶ 4(b)(iv) because Respondent is offering similar services to those offered by Complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant argues that Respondent knew, or should have known, of Complainant’s rights in the mark at the time of registration. As support, Complainant points out the similarities between Complainant’s own website and Respondent’s website, both in nature and design. See Compl., at Attached Exs E and F. Moreover, Respondent has admitted to having been at least partially “inspired” by Complainant’s website. Therefore, the Panel concludes from the available evidence that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration, so that the Panel finds that such evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ournextdoor.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David S. Safran, Panelist
Dated: September 24, 2014
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