Intertek Testing Services NA Inc. v. Michael brooks, Bona Lines
Claim Number: FA1410001582831
Complainant is Intertek Testing Services NA Inc. (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Michael brooks, Bona Lines (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intertek-group.com>, registered with Internet.bs Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 10, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <intertek-group.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@intertek-group.com. Also on October 13, 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 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Respondent’s <intertek-group.com> domain name is confusingly similar to Complainant’s INTERTEK mark.
2. Respondent does not have any rights or legitimate interests in the <intertek-group.com> domain name.
3. Respondent registered and uses the <intertek-group.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.”).
The Panel finds that Complainant’ s registrations for its INTERTEK mark constitute evidence of Complainant’ s rights under the UDRP, regardless of Respondent’ s location. See Twentieth Century Fox Film Corporation v. PPA Media Services, FA1467717 (Nat. Arb. Forum) (“The Panel finds that Complainant established that it has rights in the FOX SPORTS mark under Policy ¶ 4(a)(i) through its trademark holdings with the USPTO, irrespective of Respondent’ s location outside the U.S.”).
Respondent’s <intertek-group.com> domain name uses Complainant’s INTERTEK mark in its entirety and adds the generic term “group,” a hyphen, and the generic top-level domain (“gTLD”) “.com.” Panels routinely find that these minor alterations do not differentiate a disputed domain name from a registered mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also H-D v. Zhang Jia Jing (FA1533417) (“UDRP panels have consistently held that both hyphens (whether omitted or added) and gTLD such as ‘.com’ are irrelevant to confusing similarity analysis.). Thus, the Panel finds that Respondent’s <intertek-group.com> domain name is confusingly similar to Complainant’s INTERTEK mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent has no rights or legitimate interests in the <intertek-group.com> domain name under Policy ¶ 4(c)(ii), and states that Respondent has never been licensed or authorized by Complainant to use the INTERTEK mark. The WHOIS information for the disputed domain name listed as “Michael Brooks” as the registrant. Respondent has not submitted a Response to this Complaint, an indication that Respondent lacks rights or legitimate interests. See Twentieth Century Fox Film Corporation v. PPA Media Services, (FA1467717) (“WHOIS information lists ‘PPA Media Services / Ryan G Foo’ as the registrant of the at-issue domain name and there is no evidence that tends to show that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that respondent is not commonly known by the <foxsportsnet.com > domain name for the purpose of Policy ¶ 4(c)(ii).”). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent uses the disputed domain name to trade on the good will associated with Complainant’s mark, namely for a website displaying pay-per-click links. The Panel notes that some of the links displayed include “Domain Web Hosting,” “Cheap Web Hosting Sites,” “Free Web Hosting with PHP,” and “cPanel Hosting.” This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has no rights or legitimate interests in the <intertek-group.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <intertek-group.com> domain name disrupts Complainant’s business by using Complainant’s mark to redirect Internet users to a website featuring generic links to third-party websites, and away from Complainant’s legitimate business. The panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) concluded that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii). The Panel similarly concludes that Respondent’s use of the disputed domain name to disrupt Complainant’s legitimate business indicates bad faith use and registration under Policy ¶ 4(b)(iii).
Respondent’s use of the disputed domain name creates a likelihood of confusion with Complainant’s INTERTEK mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s resolving website. Complainant adds that Respondent is presumably profiting from the third-party links displayed on Respondent’s resolving website. The Panel agrees and finds that Respondent’s use of the <intertek-group.com> domain name to resolve to a website displaying third-party links for commercial gain constitutes bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) where the panel found that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant.
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the INTERTEK mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. The Panel agrees and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
The Panel finds that Complainant has satisfied 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 <intertek-group.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 17, 2014
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