SNBL USA, Ltd. v. Andre Schneider / DomCollect AG
Claim Number: FA1404001553171
Complainant is SNBL USA, Ltd. (“Complainant”), represented by Rita J. Piel of Miles & Stockbridge, Maryland, USA. Respondent is Andre Schneider / DomCollect AG (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snlbusa.com>, registered with 1&1 Internet AG.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2014; the National Arbitration Forum received payment on April 8, 2014.
On April 10, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <snlbusa.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2014 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@snlbusa.com. Also on April 10, 2014, 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 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
i. Complainant, SNBL USA, Ltd. has continuously used the SNBL mark in commerce in association with medical testing, scientific research, and conducting workshops, seminars and training in pre-clinical and clinical research.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for SNBL mark (e.g., Reg. No. 2,871,825, registered August 10, 2004).
iii. Respondent’s <snlbusa.com> domain name is confusingly similar to Complainant’s SNBL mark.
i. Respondent has no rights or legitimate interests in the domain name.
ii. Respondent is not commonly known by the <snlbusa.com> domain name.
iii. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain name to create e-mail accounts and host hyperlink advertisements.
i. The <snlbusa.com> domain name has been registered and is being used in bad faith.
ii. Respondent offered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the SNBL mark or to a competitor of Complainant for a profit.
iii. Respondent registered the domain name to intentionally attempt to distract, for commercial gain, Internet users to its website by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Complainant’s website, employee emails, and services offered on Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <snlbusa.com> domain name on April 6, 2011.
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.”).
Complainant contends that it has continuously used the SNBL mark in commerce in association with medical testing, scientific research, and conducting workshops, seminars and training in pre-clinical and clinical research. Complainant asserts that it owns trademark registrations with the USPTO for SNBL mark (e.g., Reg. No. 2,871,825, registered August 10, 2004). The Panel finds that although Respondent appears to reside within Switzerland, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel determines that Complainant’s registration of the SNBL mark with the USPTO sufficiently proves its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <snlbusa.com> domain name is confusingly similar to Complainant’s SNBL mark. The Panel notes that Respondent transposes the letters “l” and “b” in Complainant’s SNBL mark. The Panel finds that Respondent’s transposition of letters in a mark is irrelevant under Policy ¶ 4(a)(i). See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel also observes that Respondent adds the geographic term “USA” to Complainant’s mark in the disputed domain name. The Panel determines that Respondent’s inclusion of this geographic term also does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Consequently, the Panel finds that Respondent’s <snlbusa.com> domain name is confusingly similar to Complainant’s SNBL mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the <snlbusa.com> domain name. Complainant alleges that Respondent never registered its domain name for trademark protection. Additionally, the Panel observes that the WHOIS record identifies “Andre Schneider / DomCollect AG” as the registrant of the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Similarly, this Panel concludes that Respondent is not commonly known under the <snlbusa.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not using the <snlbusa.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel observes that Respondent’s disputed domain name resolves to a hyperlink directory featuring links that are unrelated to Complainant’s business. Past UDRP panels have determined that a respondent’s use of a domain name to provide unrelated links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent is not using the <snlbusa.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the domain name to intentionally attempt to distract, for commercial gain, Internet users to its website by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Complainant’s website, employee emails, and services offered on Complainant’s website. The Panel observes that Respondent’s <snlbusa.com> domain name leads to a page featuring unrelated links titled “Job Openings,” “Employment Service Job,” and “Free Employer Job Posting.” The Panel notes that Respondent may commercially benefit from the use of the disputed domain name. Thus, the Panel concludes that Respondent has registered and is using the <snlbusa.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
In addition, the Panel infers actual knowledge by Respondent (a Swiss corporation) of Complainant’s mark by its inclusion of the term “USA” in the domain name. This indicates a direct targeting of the SNBL trademark of Complainant, SNBL USA, Ltd., and bad faith registration of the disputed domain name.
Thus, Complainant has also 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 <snlbusa.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 15, 2014
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