Avocent Huntsville Corp. v. Taro Yamada / Personal
Claim Number: FA1409001582613
Complainant is Avocent Huntsville Corp. (“Complainant”), represented by Suzanne Freiling of Emerson Electric Co., Missouri, USA. Respondent is Taro Yamada / Personal (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trellispartnerprogram.com>, registered with GMO INTERNET, INC. DBA ONAMAE.COM.
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.
John J. Upchurch as Panelist.
On October 2, 2014, GMO INTERNET, INC. DBA ONAMAE.COM confirmed by e-mail to the National Arbitration Forum that the <trellispartnerprogram.com> domain name is registered with GMO INTERNET, INC. DBA ONAMAE.COM and that Respondent is the current registrant of the name. GMO INTERNET, INC. DBA ONAMAE.COM has verified that Respondent is bound by the GMO INTERNET, INC. DBA 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 October 17, 2014, the Forum served the Japanese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@trellispartnerprogram.com. Also on October 17, 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 November 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant owns the TRELLIS mark through its trademark registrations around the world, including with the Japan Patent Office (“JPO”) (Reg. No. 5575873, registered April 19, 2013).
ii. Complainant uses the TRELLIS mark in connection with its business in manufacturing.
i. Policy ¶ 4(a)(i)
1. The <trellispartnerprogram.com> domain name is confusingly similar to Complainant’s TRELLIS mark because Respondent has simply added the generic terms “partner” and “program” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <trellispartnerprogram.com> domain name. Respondent is neither licensed nor authorized to use the TRELLIS mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to redirect Internet users to its own website for commercial gain.
5. Complainant previously owned the disputed domain name but mistakenly let it expire, in which case, Respondent took over the disputed domain name.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to divert Internet users away from Complainant’s actual website which disrupts Complainant’s business.
2. Respondent uses the disputed domain name to redirect Internet users to its own website for commercial gain.
3. Due to the fame of Complainant’s mark, Respondent must have had actual or constructive knowledge of Complainant’s rights in TRELLIS mark.
4. Complainant previously owned the disputed domain name but inadvertently allowed it to expire. Immediately following, Respondent jumped in and registered the disputed domain name.
LANGUAGE OF THE PROCEEDINGS
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.
1. Respondent’s <trellispartnerprogram.com> domain name is confusingly similar to Complainant’s TRELLIS mark.
2. Respondent does not have any rights or legitimate interests in the <trellispartnerprogram.com> domain name.
3. Respondent registered or used the <trellispartnerprogram.com> 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 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 uses the TRELLIS mark in connection with its business in manufacturing. Complainant claims to own the TRELLIS mark through its trademark registrations around the world, including with the JPO (Reg. No. 5575873, registered April 19, 2013). Complainant argues that such registrations are sufficient to establish rights in the TRELLIS mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010) (finding that a trademark registration with the JPO, among others, was sufficient for complainant to establish rights in its mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s JPO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <trellispartnerprogram.com> domain name is confusingly similar to Complainant’s TRELLIS mark because Respondent has simply added the generic terms “partner” and “program” to the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that the addition of a couple of generic terms to a mark is not significant enough of a change to escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). As such, the Panel finds that the <trellispartnerprogram.com> domain name is confusingly similar to Complainant’s TRELLIS mark pursuant to Policy ¶ 4(a)(i).
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <trellispartnerprogram.com> domain name. The Panel notes that the WHOIS information identifies “Taro Yamada” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the TRELLIS mark. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <trellispartnerprogram.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain
name.”).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that the disputed domain name redirects confused Internet users to Respondent’s own website for Respondents own commercial gain. Previous panels have refused to find a bona fide offering of goods or services in such a use of a disputed domain name. 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).”). Consequently, the Panel finds that Respondent had not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Further, Complainant argues that it previously owned the disputed domain name, but it mistakenly let it expire. At that time, Respondent jumped in and registered the disputed domain name. Generally, panels have held that such opportunistic registration of a disputed domain name demonstrates that the respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”). As such, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business. Specifically, Complainant argues that Respondent uses the disputed domain name to intentionally divert Internet users away from Complainant’s website to Respondent’s own website that features content that relates to Complainant’s business. See Complainant’s Ex. E. Typically, panels have held that such a use of a disputed domain name does qualify as disruption and can be considered bad faith under Policy ¶ 4(b)(iii). 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).”). Therefore, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Additionally, Complainant claims that Respondent uses the disputed domain name to redirect confused Internet users to its own website for commercial gain. Previous panels have held that such a use of a disputed domain name is consistent with bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Next, due to the worldwide fame of Complainant’s TRELLIS mark, Complainant argues that it is inconceivable that Respondent registered the disputed domain name without actual or constructive knowledge of Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, based on the worldwide fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Finally, Complainant argues that it previously owned the disputed domain name, but inadvertently allowed it to expire. At that time, Complainant alleges that Respondent swooped in and registered the now disputed domain name. Complainant argues that such opportunistic registration of a disputed domain name is indicative of bad faith pursuant to Policy ¶ 4(a)(iii). Previous panels have agreed with this argument. See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”). As a result, the Panel finds that Respondent’s registration of the disputed domain name immediately after Complainant mistakenly allowed it to expire is evidence of bad faith under 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 <trellispartnerprogram.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: 11/25/14
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