Nucor Corporation v. Nucor Corporation
Claim Number: FA0603000666107
Complainant is Nucor Corporation (“Complainant”), represented by Amanda H. Wilcox, of Hahn Loeser & Parks, LLP, One GOJO Plaza, Suite 300, Akron, OH 44311. Respondent is Nucor Corporation (“Respondent”), 2100 Rexford Road, Charlotte, NC 28211.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nucoresteel.com>, registered with Compana, LLC.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 30, 2006, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <nucoresteel.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 April 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 25, 2006 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@nucoresteel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <nucoresteel.com> domain name is confusingly similar to Complainant’s NUCOR STEEL mark.
2. Respondent does not have any rights or legitimate interests in the <nucoresteel.com> domain name.
3. Respondent registered and used the <nucoresteel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is in the business of manufacturing and recycling steel and is the largest steel manufacturer in the United States. Complainant has used the NUCOR STEEL mark continuously since 1972 in connection with the sale of steel and steel products. Complainant is the owner of U.S. Trademark Reg. No. 1,126,981 issued on November 27, 1979 for the NUCOR STEEL mark.
Respondent Manila Industries registered the <nucoresteel.com> domain name on October 25, 2005. After receiving the Complaint filed on March 24, 2006, Respondent amended the WHOIS data to list Nucor Corporation as the owner of the <nucoresteel.com> domain name. Although the WHOIS data lists Complainant as the owner of the domain name, Complainant has not been able to gain control of the domain name as of April 4, 2006.
Respondent Manila Industries has been involved in several domain disputes in the past. See Eastman Chem. Co. v. Manila Indus., Inc. FA 450806 (Nat. Arb. Forum May 6, 2005). More pertinently, upon receiving the complaint in previous domain disputes, Respondent modified the WHOIS information to reflect the complainant as the owner, but did not relinquish control of the website. See Landry’s Restaurants, Inc. v. Landrys Restaurant’s Inc., FA 506524 (Nat. Arb. Forum Aug. 11, 2005); see also High Point Bank and Trust Company v. High Point Bank and Trust, FA 632711 (Nat. Arb. Forum Feb. 22, 2006); see also The Lunada Bay Corporation v. Lunada Bay Corporation, FA 632820 (Nat. Arb. Forum Feb. 15, 2006).
Respondent’s <nucoresteel.com> domain name resolves to a search engine website that features links to related and competing businesses such as stainless steel alloys, cold finished steel bars and metal fabrication services. Additionally, the website also contains links to non-related commercial businesses such as shopping, dating, books, music, movies and poker.
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 has previously found that a complainant’s federal trademark registrations establish the complainant’s rights in the mark in cases such as 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.”). Likewise, in the present case Complainant has established rights in the NUCOR STEEL mark through registration with the United States Patent and Trademark Office (“USPTO”). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).
Complainant contends that the <nucoresteel.com> domain name is confusingly similar to Complainant’s NUCOR STEEL mark because the addition of the letter “e” to Complainant’s NUCOR STEEL mark does not create a domain name distinct from Complainant’s mark. See Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to the complainant’s mark, COMPUTERWORLD); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent’s domain name <eebay.com> is confusingly similar to the complainant’s registered EBAY trademark).
In Nevada State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum Dec. 6, 2003), the panel stated “the addition of a
generic top-level domain is irrelevant when considering whether a domain name
is identical or confusingly similar under the Policy.” Therefore, the Panel finds that the addition
of the generic top-level domain “.com” in Respondent’s <nucoresteel.com>
domain name does not negate the confusing similarity of the disputed domain
name to Complainant’s NUCOR STEEL mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
.").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the <nucoresteel.com> domain
name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”). However, the Panel now chooses to examine
whether the evidence supports Respondent’s rights or legitimate interests.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found the respondent did not have any rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to 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).
Moreover, Respondent’s <nucoresteel.com> domain name resolves to a webpage containing links to other third party websites engaged in the sale of stainless steel alloys and other links to non-related commercial businesses for which Respondent presumably receives click-through fees. Similar to the panel in Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003), where the respondent’s use of a domain name to direct Internet traffic to a website featuring links to various third party websites was found to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the registrant presumably received compensation for each misdirected Internet user, the current Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name for similar reasons under Policy ¶¶ 4(c)(i) and (iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent is located in the United States, Complainant’s registration of the NUCOR STEEL mark with the USPTO serves as constructive knowledge of Complainant’s rights in the mark to Respondent. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). Furthermore, in Samsonite Corp. v. Colongy Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000), the panel held that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. Therefore, the Panel finds that Respondent’s registration of the <nucoresteel.com> domain name incorporating Complainant’s mark despite it’s constructive knowledge of Complainant’s rights in the NUCOR STEEL mark is evidence of Respondent’s bad faith registration and use.
In Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003), the panel found a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks. In the present case, Respondent has previously registered domain names incorporating third party trademarks such as <joescrabschack.com>, <rainforestcaffe.com> and <eastmanchemicals.com>. See Landry’s Rests., Inc., v. Landrys Rests. Inc., FA 506524 (Nat. Arb. Forum Aug. 11, 2005); see also Eastman Chem. Co. v. Manila Indus., Inc., FA 450806 (Nat. Arb. Forum may 6, 2005). Thus, the Panel finds that Respondent’s pattern of domain name registration and history of adverse UDRP decisions against it, is evidence of bad faith registration pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber squatting).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nucoresteel.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 16, 2006
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