DECISION

 

GO WEB BUSINESS, LLC DBA MIINDIA v. Natarajan Gutta

Claim Number: FA1509001637178

 

PARTIES

Complainant is GO WEB BUSINESS, LLC DBA MIINDIA (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, United States. Respondent is Natarajan Gutta (“Respondent”), California, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <miindia.co>, registered with 1&1 Internet AG.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 10, 2015; the Forum received payment on September 10, 2015.

 

On September 14, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <miindia.co> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name.  1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 September 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@miindia.co. Also on September 21, 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 October 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is well known for building the first online community for the Indian diaspora in Michigan, featuring an interactive bulletin board that includes events, articles, third party advertisements, weblogs, and messages. Complainant is the owner of the MIINDIA mark. Complainant has registered the MIINDIA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,655,801, first use September 30, 1999; filing date April 24, 2014; registered December 16, 2014), which demonstrates its rights in the mark. Complainant also owns common law rights in the mark that predate Respondent’s registration of the disputed domain name. The <miindia.co> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s MIINDIA mark and merely adds the country code top-level domain (“ccTLD”) “.co.”

 

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Additionally, Respondent does not make a bona fide offering of goods or services through the disputed domain name or provide a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to one or more commercial websites, including its DTWDESI.COM website, which offers similar and competing online community bulletin board services.

 

Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name has competed with and disrupted Complainant’s business. Respondent uses the disputed domain name to intentionally attract and divert Internet users to its website, which appears to offer competing online bulletin and related goods and services by taking advantage of users searching for Complainant on the Internet and by creating a likelihood of confusion with the MIINDIA mark as to the source, sponsorship, and endorsement of Respondent’s website and of the products and services offered at the site. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is Go Web Business, LLC DBA Miindia of Canton, MI, USA. Complainant is the owner of a domestic registration for the MIINDIA mark which it has continuously used since at least as early as September 1999 in connection with the promotion, advertising and sale of web based interactive services. Complainant is also the owner of the domain name <miindia.com> which it has also used continuously since September 1999 in connection with the same business endeavors previously noted.

 

Respondent is Natarajan Gutta of Sacramento, CA,USA. Respondent’s registrar’s address is indicated as Karlsruhe, Germany. The Panel notes that the disputed domain name was registered on or about March 12, 2013.

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant alleges it is well known for building the first online community for the Indian diaspora in Michigan, featuring an interactive bulletin board that includes events, articles, third party advertisements, weblogs, and messages. Complainant is the owner of the MIINDIA mark through registration with the USPTO (Reg. No. 4,655,801, first use September 30, 1999; filing date April 24, 2014; registered December 16, 2014). The Panel finds that Complainant’s trademark registration with the USPTO is sufficient in demonstrating its rights in the MIINDIA mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Additionally prior panels have recognized that rights in a mark date back to the filing date of such a mark’s registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel here finds that Complainant’s registration rights relate back to the filing date of April 24, 2014.

 

Complainant also asserts common law rights in the MIINDIA mark. Complainant argues that because the MIINDIA mark has been continuously used by Complainant in connection with the promotion, advertising, and sale of Complainant’s services since at least September 30, 1999, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). The Panel also notes the WHOIS record for Complainant’s MIINDIA.COM domain name, which was registered in September 1999. Additionally, Complainant asserts that it has spent significant time, effort, and expense in advertising, promoting, and developing the MIINDIA mark in Michigan and throughout the United States. Past panels have found that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights via a secondary meaning in the mark. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Complainant’s date of first use in commerce on its federal registration also indicates a date of September 1999. The Panel here finds that Complainant has demonstrated common law rights to the MIINDIA mark pursuant to Policy ¶ 4(a)(i) dating back to September 1999.

 

Further, Complainant asserts that the <miindia.co> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s MIINDIA mark and merely adds the ccTLD “.co.” The Panel finds that the addition of a ccTLD is irrelevant to  a Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). As such, the Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

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), 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). The Complainant has met this burden.

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. First, Complainant argues that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant has not authorized Respondent to use Complainant’s mark in association with the disputed domain name. The Panel notes that the WHOIS information indicates “Natarajan Gutta” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As the Panel has received no information from the Respondent the panel finds no basis to conclude Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Further, Complainant asserts that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant contends that Respondent is using the disputed domain name to redirect Internet users to one or more commercial websites, including its DTWDESI.COM website, which offers similar and competing online community bulletin board services. The Panel finds that Respondent’s behavior is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant argues that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by registering a confusingly similar domain name that mimics the online bulletin content and information offered by Complainant on its legitimate website. Past panels have concluded that a respondent’s registration of a domain name that is confusingly similar to the complainant’s mark in order to operate a competing website supports a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). The Panel here finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent uses the disputed domain name to intentionally attract and divert Internet users to its website, which offers a competing online bulletin and related goods and services, by creating a likelihood of confusion with the MIINDIA mark as to the source, sponsorship, and endorsement of Respondent’s website. Previous panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent’s disputed domain name was used to host a website that offered goods and services similar to those offered by the complainant under its mark. 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). The Panel here finds that the Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

Complainant has proven this element.

 

DECISION

As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

 

 

 

 

Accordingly, it is Ordered that the <miindia.co> domain name be TRANSFERRED  from Respondent to Complainant.

 

                                    Darryl C. Wilson, Panelist

                                     Dated: October 29, 2015

 

 

 

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