Popular Enterprises, LLC. v. Click Cons. Ltd
Claim Number: FA0701000890762
Complainant is Popular Enterprises, LLC. (“Complainant”), represented by Brett
A. August, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <netste.com>, registered with Domaindoorman, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2007.
On January 17, 2007, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <netste.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, 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 January 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2007 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@netste.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns and operates
the <netster.com> domain name, an Internet portal that draws on the
results of various search listings to provide users with content-relevant
searches from a base of over eight billion web sites.
In addition, Complainant
provides users with an array of content listings including news, travel
information, weather, stock quotes, financial services, maps, and
entertainment.
Complainant has registered
the NETSTER service mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,769,891, issued September 30, 2003) for use in the
provision of these Internet services.
Respondent registered the <netste.com> domain name on June 10, 2006.
Respondent is neither commonly known by the <netste.com> domain name nor licensed by Complainant to register domain names featuring Complainant’s NETSTER mark.
Respondent’s disputed domain name resolves to a website that features links to various third-party commercial web pages.
Respondent’s <netste.com> domain name is confusingly similar to Complainant’s NETSTER mark.
Respondent’s use of the <netste.com> domain name will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites.
Respondent does not have any rights or legitimate interests in the disputed <netste.com> domain name.
Respondent registered and uses the <netste.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence of its rights in the NETSTER service mark through registration with the USPTO, which is sufficient to establish its rights in the mark for purposes of 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.”
Complainant contends that Respondent’s <netste.com> domain name is
confusingly similar to Complainant’s mark.
We agree. Respondent’s domain
name retains the dominant features of Complainant’s mark but merely omits the
letter “r.” This minor difference fails
to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶
4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights to or legitimate interests in the <netste.com> domain name. Complainant’s assertion is sufficient to establish a prima facie case under Policy ¶ 4(a)(ii), thereby shifting the burden to Respondent to present evidence of its rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clerical-medical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by a complainant that a respondent has no rights or legitimate interests is sufficient to shift the burden of proof to that respondent to demonstrate that such rights or legitimate interests exist).
Complainant also contends that Respondent is neither commonly known by the <netste.com> domain name nor licensed to register domain names featuring Complainant’s NETSTER mark. Without evidence suggesting otherwise, we conclude that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) a complainant’s prior rights in the domain name precede that respondent’s registration; and (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use the trademarked name).
Complainant further contends that Respondent is using its disputed domain name to resolve to a website that features links to various commercial websites from which Respondent presumably receives referral fees. Such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of a domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services under the Policy).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the <netste.com> domain name will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. We are convinced that such use of a domain name for Respondent’s own commercial gain is evidence of Respondent’s bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that a respondent ran afoul of Policy ¶ 4(b)(iv) because that respondent admittedly used a complainant’s well-known mark to attract users to that respondent's website).
To this we would add that it appears that Respondent
registered the <netste.com>
domain name with at least constructive knowledge
of Complainant’s rights in the NETSTER trademark by virtue of Complainant’s
prior registration of that mark with the pertinent national authorities in the
United States. Registration of an
identical or confusingly similar domain name despite such constructive knowledge
is, without more, evidence of bad faith registration and use of the domain name
pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <netste.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 2, 2007
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