The Complainant is Network of Indian Professionals of North America, Inc. of Wilmington, Delaware, United States of America (“US”), represented by Frost Brown Todd LLC, United States of America.
The Respondent is Ilya Proxorov of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2012.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 3, 2012. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant has been engaged in the business of providing professional networking services for South Asians in North America since 1990 and originally started as a forum for South Asians to meet and network. Today, the organization has 23 chapters in North America and has a reach of over 350,000 people in North America between its chapters, members, newsletter subscribers, radio show, alliance partners and social media.
The Complainant is registered owner of the US trademark registrations No. 3,939,614 NETIP, registered on April 5, 2011 (hereinafter referred to as the “NETIP Mark”), and No. 2,928,583 NETIP NORTH AMERICA, registered on March 1, 2005. Since 1996, the Complainant has owned and used the domain name . Furthermore, the Complainant’s chapters have used geographic variants of the domain name with the Complainant’s authorization and permission, to provide information specific to that chapter, including membership and events. For example, the Atlanta (US) chapter of the Complainant has a website located at , the Chicago (US) chapter of the Complainant has a website located at , and the Toronto (Canada) chapter of the Complainant has a website located at .
The disputed domain name had been a key means of communicating information to the public specific to the Miami chapter since 2003 and was inadvertently dropped after it had not been renewed in July of 2011 by the Complainant’s Miami chapter. Subsequently, it was acquired by the Respondent on or about September 20, 2011. The disputed domain name had been used to display content exploiting children in a pornographic manner. The content was disabled after the Complainant had contacted the concerned registrar and the FBI with regard to the use of the disputed domain name. At the date of decision, the website at the disputed domain name appears blank. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been proven in the present case:
(1) The disputed domain name is confusingly similar to the NETIP Marks, which have been used continuously and exclusively in connection with its professional networking services since at least as early as 2003, as it incorporates the Complainant’s trademarks in its entirety, only adding the geographical term “Miami”, which is even more likely to give rise to confusion among consumers, as the term “Miami”, combined with “NetIP”, suggests to consumers that one can go to the website available at the disputed domain name to find out about the Complainant’s services and corresponding events located in Miami, as well as information on the Miami chapter itself.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as he is not affiliated with the Complainant, as he has not received permission, authorization or license from the Complainant, as he is not a member of the Miami chapter of the Complainant, as he is not now, nor has ever been, known as “NetIP Miami” in the normal course of business or trade, and as there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
(3) The disputed domain name was registered and is being used in bad faith, as the use of a domain name in connection with child pornography is bad faith use and registration and as the Respondent’s use and registration of the disputed domain name in connection with child pornography is a bad faith use and registration per se that tarnishes the goodwill and reputation of the Complainant and its members. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
“(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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”. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's NETIP Mark in which the Complainant has rights.
The mere addition of the geographical identifier “Miami” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name because it is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of geographical identifiers, such as “Miami” (cf. Diners Club International Ltd. v. GDCash LLC, NAF Claim No. 1272949 ( et al.); Morgans Hotel Group LLC and Beach Hotel Associates v. James Stanley, NAF Claim No. 554996 (); Barry D. Sears Ph.D. v. Alyssa Lindner,WIPO Case No. D2006-0493 ( et al.); Group Kaitu, LLC and Darkside Productions, Inc v. KerryWeb Enterprise, Inc.,WIPO Case No. D2007-0718 ( et al.)).
Furthermore, it is well established that the top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use of the disputed domain name in connection with child pornography is illegal and therefore no bona fide use under the Policy (cf. Prada S.A. v. Michael Faronston,WIPO Case No. D2006-0585).
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location”.
With regard to bad faith use, by using the disputed domain name in connection with a website providing pornographic content, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to another online location for commercial gain as set out under paragraph 4(b)(iv) of the Policy. It is well established that the use of a domain name in connection with illegal content constitutes bad faith use under the Policy as such use tarnishes the distinctiveness and repute of the Complainant’s trademark (cf. Prada S.A. v. Michael Faronston,WIPO Case No. D2006-0585; Ferrero S.p.A. v. Alexander Albert W. Gore,WIPO Case No. D2003-0513; Valor Econômico S.A. v. Daniel Allende,WIPO Case No. D2001-0523).
With regard to bad faith registration, previous panels have found that if a complainant satisfactorily establishes circumstances as set out in paragraph 4(b)(iv) of the Policy, an inference can be drawn that the domain name was also registered in bad faith, leaving it to the respondent to produce evidence that the domain name was registered in good faith (cf. SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE v. CES MARKETING GROUP INC., eResolution Case No. AF-0104; Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting,WIPO Case No. D2001-1391; Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company,WIPO Case No. D2000-0878). In the present case, however, the Panel need not rely on such an inference only. On balance, the Panel finds that the Respondent was more likely than not aware of the Complainant and its rights when registering the disputed domain name. The disputed domain name consists of the acronym NETIP and the geographical identifier “Miami”. Although the Respondent is located in the Russian Federation and the Complainant did not provide any evidence that its trademarks are protected in the Russian Federation, the fact that the disputed domain name clearly refers to the US, where the Complainant is providing its services, and consists of English terms, the Respondent in all likelihood understands the English language and was aware of the Complainant and its business when acquiring the disputed domain name. Without such knowledge a person located in the Russian Federation would in all likelihood not have registered the disputed domain name.
Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Brigitte Joppich
Sole Panelist
Dated: February 10, 2012
Full & Egal Universal Law Academy