Building Owners and Managers Association International v. Hassan Ajmal
Claim Number: FA1812001822445
Complainant is Building Owners and Managers Association International (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Hassan Ajmal (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tobyawards.org>, registered with TurnCommerce, Inc. DBA NameBright.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 24, 2018; the Forum received payment on December 24, 2018.
On January 2, 2019, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <tobyawards.org> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.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 January 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2019 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@tobyawards.org. Also on January 4, 2019, 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 January 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a federation of 89 associations in the United States and 18 international affiliates that represents the owners and managers of commercial properties. Complainant issues awards to the commercial real estate industry under its TOBY program. Complainant has rights in the TOBY mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,448,963, registered June 17, 2008). See Compl. Annex 3. Respondent’s <tobyawards.org> domain name is confusingly similar to Complainant’s mark because Respondent adds the “.org” generic top-level domain to Complainant’s fully incorporated mark.
ii) Respondent lacks rights or legitimate interests in the <tobyawards.org> domain name. Respondent is not commonly known or identified by the dispute domain name nor is Respondent a licensee, partner, or otherwise authorized to use Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses content cut and pasted from Complainant’s website to pass off as Complainant and redirect Internet users to an unrelated website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name to falsely suggest a partnership, connection, and affiliation with Complainant to confuse consumers and redirect them to an unrelated website. Respondent’s use of the disputed domain name likely creates confusion as to source, sponsorship, endorsement, or affiliation of Respondent’s website. Further, Respondent had actual and/or constructive notice of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent did not submit a response.
1. Respondent registered the disputed domain name on October 22, 2017.
2. Complainant has established rights in the TOBY mark based on its registration with the USPTO (e.g. Reg. No. 3,448,963, registered June 17, 2008).
3. Respondent cuts and pastes content from Complainant’s website to the disputed domain name's resolving website.
4. The disputed domain name's resolving website displays a link to an unrelated website.
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(f), 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 (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 asserts rights in the TOBY mark based on its registration with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant provides the Panel a copy of its registration with the USPTO (e.g. Reg. No. 3,448,963, registered June 17, 2008). See Compl. Annex 3. Therefore, the Panel finds Complainant has established rights in the TOBY mark per Policy ¶ 4(a)(i).
Complainant contends Respondent’s <tobyawards.org> domain name is confusingly similar to Complainant’s TOBY mark because Respondent fully incorporates the TOBY mark and the addition of the “.org” gTLD fails to distinguish the disputed domain name from Complainant’s mark. The addition of a gTLD does not distinguish a disputed domain name from a complainant’s mark under a Policy ¶ 4(a)(i) analysis. See 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) (”Respondent’s <nexcare.org> domain name incorporates the NEXCARE mark and merely adds “.org.” This addition does not distinguish the disputed domain name from Complainant’s mark… Thus, the Panel finds that Respondent’s <nexcare.org> domain name is confusingly similar to Complainant’s NEXCARE mark.”). Additionally, the Panel notes that while Complainant does not make this assertion, the addition of a generic or descriptive word such as 'awards' to the mark insufficient to distinguish a disputed domain name from a complainant’s mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent lacks rights or legitimate interest in the <tobyawards.org> domain name because Respondent is not commonly known or identified by the disputed domain name nor is Respondent a licensee, partner, or authorized to use Complainant’s TOBY mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Hassan Ajmal,” and there is no other evidence to suggest that Respondent was authorized to use the TOBY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant asserts Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Specifically, Complainant contends that Respondent instead cuts and pastes content from Complainant’s website to give the impression of a connection with Complainant and diverts Internet users to an unrelated website. See Compl. Annex 4. Use of a disputed domain name to confuse Internet users into believing a connection or affiliation exists between it and a complainant and diverting Internet users to an unrelated website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”). Complainant provides a copy of the disputed domain name’s resolving website which contains content related to Complainant’s website as well as links to an unrelated, third party website. See Compl. Annex 4. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to pass off as Complainant by cutting and pasting content from Complainant’s website as well as displaying a link to an unrelated website for commercial gain. Use of a domain name to mimic a complainant and give the impression that an affiliation or connection exists with a complainant can demonstrate bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Additionally, using a disputed domain name to display third party links can constitute bad faith per Policy ¶ 4(b)(iv). Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s contentions that the disputed domain name resolves to a website containing information about Complainant as well as links to another website. See Compl. Annex 4. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tobyawards.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 4, 2019
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