WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kimball International, Inc. v. I Wayan Sudarma Case No. D2010-0502 1. The Parties
The Complainant is Kimball International, Inc. of Jasper, Indiana, United States of America, represented by Baker & Daniels LLP of Indianapolis, Indiana, United States of America.
The Respondent is I Wayan Sudarma of Denpasar, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2010. On April 1, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On April 7, 2010, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2010. The Respondent did not submit any formal response.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 4, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, Kimball International, Inc., is the founder and parent company of National Office Furniture, which provides customers with office furniture and offers short lead times. The Complainant and its affiliated companies manufacture and sale office furniture for nearly 30 years.
The Complainant has spent millions of dollars (USD) advertising and promoting the NATIONAL trademark over the years. The Complainant's endeavors were fertile. The Complainant enjoys annual sales in excess of one hundred million dollars (USD) of NATIONAL trademarked goods.
The Complainant is the owner of United States (“US”) trademark registration No. 2,725,331 – NATIONAL and design, with the registration date of June 10, 2003. The Complainant has been making use of this mark prior to its registration, since as early as February 4, 1980.
As a result of continuous use in the NATIONAL mark in the field of office furniture, the NATIONAL mark became well-known and is identified solely with the Complainant and the Complainant's affiliated companies.
The Complainant also developed a presence on the Internet and is the owner of the following domain name, which contains the name “national” in . The Complainant is using this domain name in connection with its activities.
The Respondent registered the disputed domain name on September 7, 2009.
The disputed domain name used to resolve to a website which promoted the sale of office furniture.
At the time of writing this Decision, the disputed domain name resolves to a webpage which displays the following announcement: “Oops! Internet Explorer could not find . 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the NATIONAL trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that the NATIONAL trademark is inherently distinctive as an identification of the source of office furniture goods.
The Complainant further argues that it has exclusive rights to the NATIONAL trademark. The Complainant argues that it has been using the NATIONAL mark continuously since 1980 and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the NATIONAL mark.
The Complainant further argues that the Respondent is not making a legitimate use of the NATIONAL mark.
The Complainant further argues that the Respondent promoted goods under the disputed domain name, which bears the NATIONAL trademark, without the Complainant's consent. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent was using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its NATIONAL mark and products at the time the Respondent registered the disputed domain name.
The Complainant further argues that the Respondent registered the disputed domain name on purpose to disrupt the Complainant's business.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not file a formal reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of U.S. trademark registration No. 2,725,331 – NATIONAL and design, with the registration date of June 10, 2003.
The disputed domain name differs from the registered NATIONAL trademark by the additional words “office” and “furniture”, and the gTLD “.net”.
The disputed domain name integrates the Complainant's trademark NATIONAL in its entirety, as a dominant element. The Panel cites the following decision with approval, “[r]espondent's domain name wholly incorporates [c]omplainant's mark […]. Accordingly, it is confusingly similar to a mark in which [c]omplainant has rights” (see Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
The additional words “office” and “furniture” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's NATIONAL trademark, especially as they represent goods that are regularly sold by the Complainant under the NATIONAL mark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the [c]omplainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.net” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interest.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the NATIONAL trademark, or a variation thereof. The Respondent did not submit a formal or otherwise material Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant owns a trademark registration for the NATIONAL trademark since the year 2003. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain name led Internet users to a website, which promoted the sale of office furniture, some of which carried the NATIONAL mark. The Respondent's use of the trade name “national” to promote similar or identical goods to the goods being sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark NATIONAL and subsequent intent to trade off the value of these. The Respondent's previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made of the disputed domain name to offer quasi-identical goods to the ones the Complainant manufactures and markets constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
At the time or writing this decision, the disputed domain name resolves to a Google error webpage which displays the following announcement: “Oops! Internet Explorer could not find .” However, the fact that the Respondent has ceased the use of the domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Further, the disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the [c]omplainant's site to the [r]espondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the use of the NATIONAL trademark in the disputed domain name and the previous use made by the Respondent of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: May 17, 2010
Full & Egal Universal Law Academy