Popular Enterprises, LLC. v. DomainSource.com, Inc.
Claim Number: FA0608000781931
Complainant is Popular Enterprises, LLC. (“Complainant”), represented by Brett A. August, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is DomainSource.com, Inc. (“Respondent”), PO Box 720520, Redding, CA 96099-7520.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <netsters.com>, registered with Network Solutions, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 23, 2006.
On August 23, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <netsters.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 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@netsters.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <netsters.com> domain name is confusingly similar to Complainant’s NETSTER mark.
2. Respondent does not have any rights or legitimate interests in the <netsters.com> domain name.
3. Respondent registered and used the <netsters.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Popular Enterprises, LLC., operates a search engine website under the NETSTER mark. Complainant has maintained its search engine website at the <netster.com> domain name since 2001. The website is one of the fastest-growing portal websites on the Internet.
Complainant holds a trademark registration for the NETSTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,769,891 issued September 30, 2003).
According to the WHOIS information, Respondent registered the <netsters.com> domain name on October 11, 2004. Respondent’s domain name resolves to a commercial web directory with links to various content and a search engine function that competes with Complainant’s own search engine services. After Complainant contacted Respondent regarding the disputed domain name, Respondent replied with an offer to sell the <netsters.com> domain name to Complainant, along with other domain names Respondent had registered.
Respondent has been the subject of at least one previous UDRP proceeding involving the registration of a domain name incorporating another party’s registered trademark. See Florists’ Transworld Delivery, Inc. v. DomainSource.com, FA 105882 (Nat. Arb. Forum May 1, 2002).
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.
Because Complainant holds a trademark registration for the
NETSTER mark, which it acquired before Respondent registered the disputed
domain name, Complainant has established rights in the NETSTER mark according
to Policy ¶ 4(a)(i). See Paisley
Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding
that the complainant had established rights in the PAISLEY PARK mark under
Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also
Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006)
(“Complainant has established rights in the MICROSOFT mark through registration
of the mark with the USPTO.”).
Respondent’s <netsters.com> domain name
contains Complainant’s entire registered NETSTER mark and merely adds the
letter “s.” The Panel finds that by
merely adding one letter to Complainant’s mark in the disputed domain name,
Respondent has not sufficiently distinguished the disputed domain name from the
mark and as a result, the <netsters.com> domain name is
confusingly similar to the NETSTER mark pursuant to Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook
Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain
name <nationalgeographics.com> was confusingly similar to the
complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford,
FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’
to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the
likelihood of confusion caused by the use of the remaining identical mark. The
domain name <creampies.com> is similar in sound, appearance, and
connotation”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <netsters.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <netsters.com>
domain name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name “DomainSources.com,
Inc.,” and there is no other evidence in the record indicating that Respondent
is commonly known by the <netsters.com> domain name. Consequently, Respondent has not established
rights or legitimate interests in the <netsters.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); 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).
Moreover, Respondent’s <netsters.com> domain name, which is confusingly similar to Complainant’s NETSTER mark, resolves to a commercial web directory providing search engine services that compete with Complainant’s own services under the NETSTER mark. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Id. Because Respondent is also using the disputed domain name to redirect Internet users to a completing website, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <netsters.com> domain
name, which includes Complainant’s NETSTER mark, to divert Internet users
seeking Complainant’s search engine services to its own search engine website
featuring links to various content.
Respondent likely receives click-through fees for each consumer it
diverts to this website and via links on the website. Therefore, Respondent is taking advantage of the confusing
similarity between the <netsters.com> domain name and
Complainant’s NETSTER mark, and profiting from the goodwill associated with the
mark. Use of the disputed domain name
for this purpose suggests bad faith registration and use under Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution June 12, 2000) (finding that the respondent violated Policy ¶
4(b)(iv) because the respondent admittedly used the complainant’s well-known
mark to attract users to the respondent's website).
Moreover, Respondent has
registered and used the domain name in order to disrupt Complainant’s business,
as Respondent is using the <netsters.com> domain name to maintain
its own search engine website similar to the website Complainant operates under
its NETSTER mark at the <netster.com> domain name. In Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003), the panel found that the respondent had registered
and used the <euro-disney.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iii) because it resolved to a website promoting a competing theme
park. Here, then, Respondent’s use of
the disputed domain name to operate a search engine website that prominently
displays Complainant’s NETSTER mark provides evidence that it registered the
domain name primarily to disrupt Complainant’s business in violation of Policy
¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area).
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 <netsters.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 2, 2006
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