The Complainant is NCI Group, Inc. of Houston, Texas, United States of America, represented by Bracewell & Giuliani LLP, United States of America.
The Respondent is Domains By Proxy, LLC / Richard Allen1 of Scottsdale, Arizona, United States of America and Fort Worth, Texas, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2013. On February 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on February 22, 2013, and March 2, 2013.
The Center verified that the Complaint together with the amended Complaints 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 March 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on April 3, 2013. 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 owns federal trademarks registrations for NCI and NCI BUILDING COMPONENTS, registered by the United States Patent and Trademark Office (“USPTO”) on January 7, 1997. The Complainant has used the NCI marks in connection with the design, manufacture and marketing of its metal building systems and components since as early as April 1989. The Complainant also is the registered owner of , used with the Complainant’s website at ‘’www.’’.
The disputed domain name was registered on December 7, 2012. The disputed domain name does not resolve to an active website, but the Complainant has submitted evidence of the Respondent’s use of the disputed domain name with an email address, purporting to be that of NCI employee, based on which the Respondent has held himself out as an employee of the Complainant to deceive vendors into shipping products to the Respondent on credit. The annexes to the Complaint indicate that the Respondent has used the disputed domain name to make inquiries or establish credit with at least six vendors and has succeeded in acquiring products from two vendors. The first occasion was with vendor CDW Direct in the amount of USD 20,563.85. The second occasion was with vendor School Outfitters in the amount of USD 12,055.12. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s NCI mark as it incorporates the Complainant’s mark in its entirety. According to the Complainant, the Respondent has not been authorized to use the Complainant’s mark, is not commonly known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not otherwise making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Complainant maintains and has documented that the Respondent has used the disputed domain name to hold himself out to be an employee of the Complainant in order to fraudulently establish credit and unlawfully obtain products from vendors while impersonating the Complainant. The Complainant submits that this pattern of behavior by the Respondent demonstrates bad faith registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain name is confusingly similar to the Complainant’s NCI mark, in which the Complainant has established rights through registration and long use. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
In this instance, the disputed domain name incorporates the Complainant’s NCI mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. In the Panel’s view, the confusing similarity of the disputed domain name to the Complainant’s mark is not overcome by the addition of the letters “grps”, an apparent abbreviation for the word “groups”, which following “‘nci” in the disputed domain name further calls to mind the Complainant’s trade name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainant’s NCI mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent notwithstanding has used the disputed domain name in association with an email address, which in turn has been used in furtherance of an apparently fraudulent scheme.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record before the Panel, the Respondent clearly had the Complainant’s NCI mark in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order exploit and profit from the Complainant’s rights in the NCI mark through the perpetration of an fraudulent scheme to deprive others of their property. The record does not reflect the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, or to make a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name or authorized to use the Complainant’s mark. To the contrary, the record convincingly shows that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark 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) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to his website or other online 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 his website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The record convincingly evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, in furtherance of an apparently fraudlent scheme of impersonation perpetrated on third-parties. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has 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.
William R. Towns
Sole Panelist
Date: April 22, 2013
1 At the time of the filing of the initial Complaint, the WhoIs records for the disputed domain name identified Domains By Proxy, LLC as the registrant. Richard Allen subsequently was disclosed by the concerned Registrar as the underlying registrant of the disputed domain name, and the Complaint amended accordingly. The “Respondent” as used herein refers to Richard Allen unless otherwise indicated.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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