Primera Technology, Inc. v. Nowe Media
Claim Number: FA0511000596020
Complainant is Primera Technology, Inc. (“Complainant”), represented by Michael T. Berger of Rider Bennett, LLP, 333 South Seventh Street, Suite 2000, Minneapolis, MN 55402. Respondent is Nowe Media (“Respondent”), Reja 5, Zielona Gora lubuskie, Poland 65-076.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <primerapolska.com>, registered with Onlinenic, Inc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2005.
On November 14, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <primerapolska.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 13, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@primerapolska.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon Ralph Yachnin 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." 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 makes the following assertions:
1. Respondent’s <primerapolska.com> domain name is confusingly similar to Complainant’s PRIMERA mark.
2. Respondent does not have any rights or legitimate interests in the <primerapolska.com> domain name.
3. Respondent registered and used the <primerapolska.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Primera Technology, Inc., first used its
PRIMERA mark in commerce in Canada in March 1993 in association with the
manufacture, sale and distribution of high quality CD and DVD duplication and
printing systems. Complainant is now
headquartered in Plymouth, Minnesota and also has locations in Germany and
Jamaica. Complainant distributes its
PRIMERA products in over eighty countries and operates its business over the
Internet via numerous domain names, including <primeratechnology.com>,
<primerastore.com>, <primeracdduplicators.com> and
<primeraeurope.de>.
Complainant owns trademark registrations in the United States, Canada, Germany and France for its PRIMERA mark. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) on January 31, 1995 (Reg. No. 1,876,441) and with the Canadian Intellectual Property Office (“CIPO”) on May 17, 1996 (TMA 457323).
Respondent registered the <primerapolska.com> domain name on June 7, 2002. Respondent is using the disputed domain name to operate a website that offers Complainant’s products without authorization as well as the products of some of Complainant’s competitors.
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."
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.”).
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.
The Panel finds that Complainant’s registrations of its PRIMERA mark with numerous national trademark authorities are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <primerapolska.com> domain name incorporates Complainant’s PRIMERA mark in its entirety and adds the geographic term “Polska,” which means “Poland.” The addition of a geographic term to Complainant’s registered mark renders the disputed domain name confusingly similar to the mark, and the use of the generic top-level domain “.com” is without significance to this analysis. See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark).
Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <primerapolska.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the PRIMERA mark, and the WHOIS information identifies Respondent as “Nowe Media.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
According to Complainant, the <primerapolska.com>
domain name is being used in association with a website that offers
Complainant’s products for sale without authorization as well as the products
of Complainant’s competitors. Such use
for the purpose of benefiting from the goodwill associated with Complainant’s
PRIMERA mark does not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i).
Furthermore, Respondent’s use of the PRIMERA mark in the domain name to
operate a website for profit is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors); see also Nat’l
Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000)
(finding that domain names used to sell the complainant’s goods without the
complainant’s authority, as well as others’ goods, is not bona fide
use); 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).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s PRIMERA mark in the <primerapolska.com> domain name to offer Complainant’s products without authorization as well as the products of Complainant’s competitors suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business. The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Additionally, Respondent is using the <primerapolska.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is using Complainant’s PRIMERA mark to attract Internet users to a website that offers Complainant’s products and the products of Complainant’s competitors. This is evidence that Respondent is attempting to profit by creating a likelihood of confusion between Complainant’s mark and Respondent’s competing website. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
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 <primerapolska.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 29, 2005
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