New America Network, Inc. v. Hector Aponte / North Atlantic Investment Puerto Rico LLC / William Otero / NAI Puerto Rico LLC
Claim Number: FA1702001716064
Complainant is New America Network, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Hector Aponte / North Atlantic Investment Puerto Rico LLC / William Otero / NAI Puerto Rico LLC (“Respondent”), Puerto Rico, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <naipuertorico.com> and <naipr.com>, registered with GoDaddy.com, LLC and Go Montenegro Domains, LLC, respectively.
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 Forum electronically on February 6, 2017; the Forum received payment on February 6, 2017.
On February 7, 2017, GoDaddy.com, LLC and Go Montenegro Domains, LLC confirmed by e-mail to the Forum that the <naipuertorico.com> and <naipr.com> domain names are registered with GoDaddy.com, LLC and Go Montenegro Domains, LLC, and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Go Montenegro Domains, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Go Montenegro Domains, LLC registration agreements 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 February 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2017 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@naipuertorico.com, postmaster@naipr.com. Also on February 10, 2017, 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant provides real estate agency services. Complainant uses the NAI mark in conjunction with its business practices. Complainant registered the NAI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,199,582, registered Oct. 27, 1998). Additionally, Complainant registered the NAI mark with the Commonwealth of Puerto Rico, Department of State (e.g., Reg. No. 200513, registered Sept. 22, 2009). Furthermore, the NAI mark is registered with government trademark agencies throughout North and South America, Europe, Asia, and Australia. Respondent’s <naipuertorico.com> and <naipr.com> are confusingly similar to Complainant’s NAI mark because they incorporate the mark in its entirety, adding the geographic term “puerto rico” and the letters “pr”, a common abbreviation for Puerto Rico.
Respondent does not have rights or legitimate interests in <naipuertorico.com> and <naipr.com>. Respondent controls the disputed domain names in violation of the agreement between Complainant and Respondent upon termination of Respondent’s contract. Respondent attempted to sell the <naipuertorico.com> domain to Complainant for $10,000, further evincing a lack of rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain names in bad faith. Respondent attempted to sell the <naipuertorico.com> domain name for an amount in excess of the registrant’s out-of-pocket costs. The disputed domain names were presumably registered to prevent Complainant from using the domain to reflect its NAI mark. Additionally, the disputed domain names disrupt Complainant’s business by attracting users to Respondent’s websites for financial gain. Respondent had actual knowledge of Complainant and its rights to the NAI mark.
B. Respondent
Respondent did not submit a response. The Panel notes that Respondent registered <naipuertorico.com> on November 11, 2010, and <naipr.com> on August 23, 2012.
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(f), 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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent changed the WHOIS information associated with the domain names in bad faith and is in control of both <naipuertorico.com> and <naipr.com>. Moreover, Complainant asserts that Respondent formed a new company, following the termination of Complainant’s and Respondent’s business partnership, that uses the NAI acronym to “back[ ] into” the domain name. Finally, Complainant avers that Respondent “clearly [spoke] for both domain name holders and has both actual and apparent control of both domain names.” As Respondent has not refuted these contentions, the Panel will accept Complainant’s allegations regarding these two entities and will refer to both as “Respondent”.
Complainant provides real estate agency services. Complainant uses the NAI mark in conjunction with its business practices. Complainant claims it registered the NAI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,199,582, registered Oct. 27, 1998). Additionally, Complainant states it registered the NAI mark with the Commonwealth of Puerto Rico, Department of State (e.g., Reg. No. 200513, registered Sept. 22, 2009). Furthermore, Complainant asserts that the NAI mark is registered with government trademark agencies throughout North and South America, Europe, Asia, and Australia. The general consensus among panels is that mark registrations with the USPTO and other government trademark agencies is sufficient to show rights in a mark. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”). Therefore, the Panel agrees and concludes that Complainant has shown sufficient rights to the NAI mark.
Complainant maintains that Respondent’s <naipuertorico.com> and <naipr.com> are confusingly similar to Complainant’s NAI mark because they incorporate the mark in its entirety, adding the geographic term “puerto rico” and the letters “pr,” a common abbreviation for Puerto Rico. “[C]ommon geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights.” AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000). Moreover, “it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.” Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004). In the instant case, the Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s NAI mark.
Complainant asserts that Respondent does not have rights or legitimate interests in <naipuertorico.com> and <naipr.com>. Complainant contends that Respondent controls the disputed domain names in violation of the agreement between Complainant and Respondent upon termination of Respondent’s business contract. Where Respondent was allegedly precluded from “using any name trade style or material incorporating ‘NAI’ or any of the Service Marks, including, but not limited to, any use in connection with email, on the internet or other electronic media . . . .”, Respondent cannot be commonly known by the terms of the domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore agrees that the terms of the Letter Agreement precludes a finding of Policy ¶ 4(c)(ii) in Respondent’s favor.
Complainant demonstrates that Respondent attempted to sell the <naipuertorico.com> domain to Complainant for $10,000, further evincing a lack of rights or legitimate interests in the disputed domain name. Panels have found that “[r]espondent’s willingness to sell [the disputed] domain name in excess of out-of-pocket registration costs weighs against [r]espondent’s case for rights or legitimate interests in the domain name.” University of Rochester v. Park HyungJin, FA 1587458 (Forum Dec. 9, 2014). Therefore, the Panel finds that the attempted sale of the disputed domain name shows that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the disputed domain names in bad faith. To support its argument, Complainant illustrates that Respondent attempted to sell the <naipuertorico.com> domain name for an amount substantially in excess of the registrant’s out-of-pocket costs. Panels have concluded that the respondent registered and was using the disputed domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007).
Furthermore, Complainant maintains that the disputed domain names were presumably registered to prevent Complainant from using the domain to reflect its NAI mark. “Registration and use of a domain name to prevent [c]omplainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).” Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004). Additionally, the disputed domain names disrupt Complainant’s business by attracting users to Respondent’s websites for financial gain. Panels have found that “capitalizing on the confusing similarity of [the disputed] domain names to benefit from the valuable goodwill that [c]omplainant has established in its marks” constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005). Therefore, given the above information, the Panel concludes that Respondent registered and is using <naipuertorico.com> and <naipr.com> in bad faith under the Policy.
It can be inferred that Respondent had actual knowledge of Complainant and its rights to the NAI mark. Panels have found that “[r]espondent registered and used the Disputed Domain Name in bad faith since [r]espondent wilfully registered the name despite its knowledge of [c]omplainant’s rights in the . . . mark, which can be inferred from the involvement . . . as a past or current employee of [c]omplainant . . . .” DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Forum Aug. 17, 2004). Hence, the Panel determines that Respondent knew or should have known of Complainant and its rights to the NAI mark when registering <naipuertorico.com> and <naipr.com>, and that such constitutes bad faith registration.
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 <naipuertorico.com> and <naipr.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 29, 2017
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