Fiberweb Geosynthetics Limited v. Belcanto Investment Group Limited
Claim Number: FA1501001599564
Complainant is Fiberweb Geosynthetics Limited (“Complainant”), represented by Douglas M Isenberg of The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC, Georgia, USA. Respondent is Belcanto Investment Group Limited (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boddingtons.us>, registered with Above.com Pty Ltd.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2015; the National Arbitration Forum received payment on January 13, 2015.
On January 14, 2015, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <boddingtons.us> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2015 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@boddingtons.us. Also on January 15, 2015, 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 February 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 uses the BODDINGTONS mark to identify its offerings of engineering materials, and in particular nonwoven plastic mesh that could be used to either keep fruits and foodstuffs in a mesh, surround glass or fragile smooth-surfaced objects, or even be used on fencing or as a base for grass paving and gravel retention. The BODDINGTONS mark has been duly registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,866,219, registered Oct. 26, 2010). Complainant contends that the <boddingtons.us> domain name at issue is identical to Complainant’s mark and only adds the ccTLD “.us.”
Complainant further alleges that Respondent has no rights or legitimate interests in the <boddingtons.us> domain name. First, there is no inference to be found showing Respondent to have any sort of trademark rights. Further, Respondent is not commonly known by this <boddingtons.us> domain name. Complainant alleges that Respondent is using the <boddingtons.us> domain name to promote alarmist messages that users need more anti-virus software to prevent malware threats.
Complainant further claims that Respondent has acted in bad faith in registering and using the domain name <boddingtons.us>. Complainant alleges that the Respondent is a serial cybersquatter who is no stranger to UDRP proceedings. See, e.g., Tetra Laval Holdings & Finance S.A. v. Above.com, Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-2200; Banco Bradesco S/A v. Belcanto Investment Group, WIPO Case No. D2013-1279; Banco Bradesco S/A v. Belcanto Investment Group Limited, WIPO Case
No. D2013-1048; LEGO Juris A/S v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-0626; IG Group Limited v. Above.com Domain Privacy / Belcanto Investment Group Limited; WIPO Case No. D2013-0177; Intesa Sanpaolo S.p.A. v. Belcanto Investment Group Limited / Above.com Domain Privacy, WIPO Case No. D2012-2378; Accor v. Above.com Domain Privacy/ Belcanto Investment Group, WIPO Case No. D2012-1179.
Finally, Complainant alleges that Respondent uses this <boddingtons.us> domain name to promote nothing more than a variety of spyware/malware “protection software” while trading on the BODDINGTONS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Given that the Respondent has failed to submit a Response to these proceedings, this Panel proceeds under the presumption that Complainant’s allegations are true unless they are clearly unreasonable. As Complainant’s allegations are reasonable, this Panel accepts them as true.
As such, this Panel finds that Respondent’s registered domain name <boddingtons.us> is the same or similar to Complainants; that Respondent has not rights or legitimate interests in or to the domain name; and that the Respondent registered and is using the 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 BODDINGTONS mark to identify its offerings of engineering materials, and in particular nonwoven plastic mesh that could be used to either keep fruits and foodstuffs in a mesh, surround glass or fragile smooth-surfaced objects, or even be used on fencing or as a base for grass paving and gravel retention. The BODDINGTONS mark has been duly registered with the USPTO (e.g., Reg. No. 3,866,219, registered Oct. 26, 2010). This Panel agrees that Complainant’s USPTO registrations represent good evidence of Complainant’s rights in the BODDINGTONS mark so as to have standing under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i).
The <boddingtons.us> domain name is identical to Complainant’s mark and only adds the ccTLD “.us.” The Panel agrees that Respondent has registered an identical domain name here because the BODDINGTONS mark is all that this domain name consists of beyond the irrelevant “.us” ccTLD. See, e.g., Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”).
The 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.”).
Here, the Complainant argues that there is no inference to be found showing Respondent to have any sort of trademark right. The Panel agrees that nothing presented suggests that Respondent has any trade or service mark identical to this Internet domain name so as to give rise to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant also claims that Respondent is not commonly known as this <boddingtons.us> domain name. The Panel notes that “Belcanto Investment Group Ltd.” is listed as the registrant of record for the <boddingtons.us> domain name. The Panel agrees that nothing in the available record here suggests that Respondent has ever been commonly known as this disputed domain name under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next argues that Respondent is using the <boddingtons.us> domain name to promote alarmist messages that users need more anti-virus software to prevent malware threats. The Panel agrees that Respondent is using this disputed domain name to suggest that users are facing the threat of malicious software. See Compl., at Attached Ex. 6. This Panel finds that such a scheme of scaring Internet users into downloading unknown software is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names.”).
Respondent is a serial cybersquatter who is no stranger to UDRP proceedings. See, e.g., Tetra Laval Holdings & Finance S.A. v. Above.com, Domain Privacy / Belcanto Investment Group Limited, WIPO D2013-2200; Banco Bradesco S/A v. Belcanto Investment Group, WIPO D2013-1279; Banco Bradesco S/A v. Belcanto Investment Group Limited, WIPO D2013-1048; LEGO Juris A/S v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO D2013-0626; IG Group Limited v. Above.com Domain Privacy / Belcanto Investment Group Limited; WIPO Case No. D2013-0177; Intesa Sanpaolo S.p.A. v. Belcanto Investment Group Limited / Above.com Domain Privacy, WIPO D2012-2378; Accor v. Above.com Domain Privacy/ Belcanto Investment Group, WIPO D2012-1179. This Panel agrees that such a sizable bulk of prior adverse domain dispute decisions is indicative of Policy ¶ 4(b)(ii) bad faith in the present dispute. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant further alleges that Respondent’s use of this <boddingtons.us> domain name to promote nothing more than a variety of spyware/malware “protection software” while trading on the BODDINGTONS mark. The Panel again takes note that Exhibit 6 to the Complaint shows how this Internet domain name is being used to promote various software downloads by suggesting the Internet user’s computer is being subject to malware software. The Panel finds that attempting to profit off the BODDINGTONS mark by creating a website resembling a “warning page” is indicative of Policy ¶ 4(a)(iii) bad faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
As such, this Panel finds that Respondent has registered and is using the domain name in bad faith in violation of Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <boddingtons.us> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: February 12, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page