INVISTA North America S.a.r.l. v. Whois Privacy Service
Claim Number: FA1502001607177
Complainant is INVISTA North America S.a.r.l. (“Complainant”), represented by David S. Safran of Roberts Mlotkowski Safran & Cole P.C., Virginia, USA. Respondent is Whois Privacy Service (“Respondent”), Munsbach, Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terate.com>, registered with Premium Registrations Sweden AB.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2015; the Forum received payment on February 27, 2015.
After numerous requests, the Registrar, Premium Registrations Sweden AB, has not confirmed to the National Arbitration that the <terate.com> domain name is registered with Premium Registrations Sweden AB or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On March 10, 2015, the Forum notified Registrar that Registrar’s noncompliance was reported to ICANN’s compliance team and that the case will proceed without Registrar’s participation, and that Registrar is obligated to prevent transfer of the domain name during this proceeding.
On March 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@terate.com. Also on March 13, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 20, the CEO of Premium Registrations Sweden AB wrote to the Forum indicating that respondent had been contacted and consented to transfer the domain name but did not otherwise refer to any of the questions in the verfication request email.
On April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 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 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 made the following contentions.
1. Complainant uses the TERATE mark in connection with its businesses that serve many industries with value-added chemical, polymer and fiber products. Complainant has registered the TERATE mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 984,233, registered May 21, 1974), which evinces rights in the mark. Respondent’s <terate.com> domain name is identical to Complainant’s mark because it incorporates the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” to the TERATE mark.
2. Respondent has no rights or legitimate interests in the <terate.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given authorization to Respondent to register the <terate.com> domain name or any variation of the TERATE mark. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the <terate.com> domain name resolves to a website containing links to third party sites, indicating that the domain name is for sale.
3. Respondent registered and is using the disputed domain name in bad faith. Respondent had actual and/or constructive knowledge of the TERATE mark and Complainant’s rights in the mark prior to registering the disputed domain name. Respondent has attempted to attract, for commercial gain, Internet users to its website from confusion as to source, sponsorship, affiliation, or endorsement of <terate.com> by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of serving industries with value-added chemical, polymer and fiber products.
2. Complainant is the registered owner of the TERATE mark having registered it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 984,233, registered May 21, 1974).
3. Respondent registered the <terate.com> domain name on July 18, 2007.
4. The <terate.com> domain name resolves to a website containing links to third party sites, indicating that the domain name is for sale.
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 first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the TERATE mark in connection with its businesses that serve many industries with value-added chemical, polymer and fiber products. Complainant submits that it registered the TERATE mark with the USPTO (e.g., Reg. No. 984,233, registered May 21, 1974), which Complainant contends is a representation of its rights in the mark. The Panel accepts that submission and the evidence on which it is based. Panels have agreed that such registrations with the USPTO and other authorities evidence a complainant’s rights in a mark and the Panel so finds in the present case. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TERATE mark. Complainant submits that Respondent’s <terate.com> domain name is identical to Complainant’s mark because it incorporates the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” to the TERATE mark. Panels have found that the addition of a “.com” gTLD to a fully incorporated mark is insufficient to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that Respondent’s <terate.com> domain name is identical to the TERATE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TERATE trademark and used it in its domain name;
(b) Respondent has then used the domain name so that it resolves to a website containing links to third party sites, indicating that the domain name is for sale.
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <terate.com> domain name. In so arguing, Complainant notes that it has never given Respondent any authorization to register the <terate.com> domain name or any variant of the TERATE mark. Additionally, the Panel notes that the relevant WHOIS information merely lists “Whois Privacy Service” as registrant of record. See Compl., at Attached Ex. 1. As Respondent has failed to add any additional evidence for the Panel’s consideration, the Panel finds that there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(e) Complainant next argues that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent’s website resolves to “a parking page with links to other sites and which indicates that the domain name is for sale.” See Compl., p. 8. Panels have seen such use as evincing neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Sterling Jewelers Inc. v. Online Management, FA 1542610 (Nat. Arb. Forum March 10, 2014) (concluding that a domain name that addresses a pay-per-click link farm parking page using a confusingly similar domain name and also contains a banner stating that the domain name is for sale “is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes that Complainant has not provided documentary evidence of the resolving pages of the website to which Respondent’s <terate.com> domain name resolves. However, based on the allegations in the Complaint, the Panel finds there is sufficient information to render a decision and the Panel finds Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is attempting to trade off the goodwill associated with the TERATE trademark to attract Internet users for commercial gain per Policy ¶ 4(b)(iv). Panels have found that where respondents have purportedly taken advantage of the notoriety of a complainant’s mark to gain commercially, a finding of bad faith under Policy ¶ 4(b)(iv) is appropriate. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel thus finds that Respondent’s registration and use of the <terate.com> domain name constitutes Policy ¶ 4(b)(iv) bad faith attraction for commercial gain.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s TERATE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <terate.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 14, 2015
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