Innovation First, Inc. v. AA7 Group Ltd. / Mr Charlie Kalopungi
Claim Number: FA1204001438667
Complainant is Innovation First, Inc. (“Complainant”), represented by Christopher J. Bischoff of Bischoff & Associates, Ltd., Illinois, USA. Respondent is AA7 Group Ltd. / Mr Charlie Kalopungi (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwhexbug.com>, registered with Key-Systems GMBH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2012; the National Arbitration Forum received payment on April 10, 2012.
On April 16, 2012, Key-Systems GMBH confirmed by e-mail to the National Arbitration Forum that the <wwwhexbug.com> domain name is registered with Key-Systems GMBH and that Respondent is the current registrant of the name. Key-Systems GMBH has verified that Respondent is bound by the Key-Systems GMBH 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 April 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2012 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@wwwhexbug.com. Also on April 18, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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
Complainant made the following contentions:
1. Complainant owns the rights to the HEXBUG mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,499,757 registered September 9, 2008).
2. Complainant manufactures robotic toys under the HEXBUG name.
3. Respondent registered the <wwwhexbug.com> domain name on September 4, 2010.
4. The domain name resolves to a website that contains commercial links to unrelated websites. See Annex B.
5. Respondent receives commission for each time a visitor clicks on the listed websites.
6. Respondent’s domain name is confusingly similar to the HEXBUG mark.
7. Respondent does not have authorization to use a domain name registration that is confusingly similar to the HEXBUG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States manufacturer and world leader in robotic toys sold under the HEXBUG brand.
2. Complainant owns the rights to the HEXBUG mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,499,757 registered September 9, 2008).
3. Respondent registered the <wwwhexbug.com> domain name on September 4, 2010.
4. The domain name resolves to a website that contains commercial links for a variety of goods and services.
5. Respondent receives commission for each time a visitor clicks on the listed websites.
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(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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to own rights to the HEXBUG mark through its trademark registration with the USPTO (Reg. No. 3,499,757 registered September 9, 2008). Previous panels have concluded that registering a mark with a national agency effectively establishes rights in the mark. In Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), the panel stated that the complainant registered its mark with the USPTO before the time that the respondent registered the disputed domain name, which sufficiently proved that the complainant had rights in the mark under Policy ¶ 4(a) (i). In Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), the panel found that a trademark registration with the USPTO demonstrated the complainant’s rights in the mark. The Panel concludes that Complainant’s trademark registration with the USPTO suffices to establish rights in the HEXBUG mark under Policy ¶ 4(a) (i). Further, the Panel finds that Complainant is not required to register a mark in the country where Respondent resides or operates for the purposes of Policy ¶ 4(a) (i). See 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The second question is whether the disputed domain name is identical or confusingly similar to the HEXBUG mark. Complainant states that the <wwwhexbug.com> domain name is confusingly similar to the HEXBUG mark. The Panel notes that the domain name includes the “www” prefix and the generic top-level domain (“gTLD”) “.com.” Prior panels have stated that the addition of the prefix “www” and the gTLD “.com” do not sufficiently distinguish a domain name from a mark. See Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”). The Panel finds that the additions to the disputed domain name do not alleviate the confusing similarity to Complainant’s HEXBUG mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that 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) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HEXBUG trademark and to use it in his domain name, adding the “www” prefix and thus creating a domain name leaving the internet user with the impression that the domain name is associated with Complainant, that it relates to an internet address of Complainant and that it would lead to an official website of Complainant , thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name by having it resolve to a website that offers, among other things, a variety of goods and services unrelated to Complainant’s business and to do so to earn monetary reward;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also alleges that Respondent is not commonly known by the <wwwhexbug.com> domain name and claims that the WHOIS information identifies the registrant as “Mr. Charlie Kalopungi.”. The Panel notes that the WHOIS information identifies the domain name registrant as “AA7 Group Ltd. / Mr Charlie Kalopungi.” The panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), held that the WHOIS information did not indicate that the respondent was commonly known by the disputed domain name under Policy ¶ 4(c) (ii). In Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), the panel concluded that based on all evidence presented, the respondent was not commonly known by the domain name. The Panel finds that, based on the WHOIS information, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).
(e)Prior panels have stated that displaying hyperlinks on a website to businesses that are unrelated to Complainant’s business is not a bona fide offering of goods or services under Policy ¶ 4(c) (i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2000) (stating that use of a confusingly similar domain name to reroute Internet users to a website that offers links to other websites unrelated to the complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Complainant establishes that Respondent’s maintenance of the corresponding web page sponsoring commercial hyperlinks that are unrelated to Complainant’s website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes Respondent is not using the disputed domain name in a manner representing a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent purposely created the likelihood that Internet users would become confused as to the relationship between Respondent’s website and Complainant’s HEXBUG mark. Complainant claims that “Respondent’s actions were motivated by financial gain in an effort to divert Internet traffic to its website” in order to generate fees by sponsoring commercial links. The Panel agrees with this submission and holds that Respondent acted with the purpose of confusing Internet users to attract them to its website in order to make a financial profit, which demonstrates bad faith registration and use under Policy ¶ 4(b) (iv). See Ass’n of Junior Leagues Int’l Inc. v. Legend .name, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (concluding that hosting a web directory with links to content unrelated to the complainant indicates bad faith pursuant to Policy ¶ 4(b)(iv); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HEXBUG mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwhexbug.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 11, 2012
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