The Complainant is NCI Group, Inc., of Texas, the United States of America ("U.S."), represented by Bracewell & Giuliani LLP, U.S.
The Respondent is Natasha Godinese of the State of Washington, U.S. 2. The Domain Name And Registrar
The disputed domain name ("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 January 28, 2015. On January 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 February 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for filing a response was February 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on February 27, 2015.
The Center appointed Marylee Jenkins as the sole panelist in this matter on March 10, 2015. 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 bases the Complaint on trademark registrations in the U.S. for the marks NCI and design, NCI BUILDING COMPONENTS and NCI BUILDINGS GROUP and design for use in connection with distributorships featuring metal building products and has, particularly, used the mark NCI and design in the U.S. since at least as early as 1989 (individually and collectively the "Complainant's Marks"). The Complainant also owns the domain name ("Complainant's Domain Name") which links to its company's website.
With respect to this dispute, the Domain Name was registered on November 21, 2014 to the Respondent and is set to expire on November 21, 2015. There is no web site currently accessible at the Domain Name. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to the Complainant's Marks and the Complainant's Domain Name, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the Domain Name was registered and is being used in bad faith by the Respondent to commit criminal fraud.
The Complainant asserts that the Domain Name is identical or confusingly similar to the Complainant's Marks and the Complainant's legal name. The Complainant contends that the Respondent is using an email address (i.e., […]@) incorporating the Domain Name as a means of contacting third-party vendors in an attempt to fraudulently purchase computers. The Complainant alleges that the confusing similarity of the Domain Name to the Complainant's Marks and its legal name is evidenced by inquiries the Complainant received from third-party vendors questioning whether the Respondent represents the Complainant. The Complainant has submitted copies of emails from third-party vendors to support this contention.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. Specifically, the Complainant contends that the Respondent is not using the Domain Name in connection with a bona fide offering of services before notice of a potential dispute. The Complainant alleges that the Respondent is using the Domain Name only for a fraudulent purpose and that the Respondent has used the services of a proxy (i.e., Domains By Proxy, LLC) to conceal a criminal enterprise. Specifically, the Complainant alleges that the Respondent has presented herself as an employee of the Complainant (using the name of a former employee of the Complainant and an email address incorporating the Domain Name) to submit fraudulent orders for products and steal goods from vendors in the name of the Complainant. The Complainant has submitted evidence in support of this contention and asserts that the Respondent's use of the Domain Name in her criminal activity establishes the Respondent's lack of rights or interests in the Domain Name.
The Complainant argues that the Respondent registered the Domain Name in bad faith by providing false contact information in violation of the domain name registration agreement to further a criminal enterprise. Specifically, the Complainant contends that the Respondent provided as its address the home owned by an individual who is not the Respondent and that the Complainant was unable to find any person with the Respondent's name. The Complainant further contends that the Respondent provided false information to further its attempted fraud on the Complainant's vendors and to make identification and communication impossible.
The Complainant also argues the Respondent is using the Domain Name in bad faith. The Complainant contends that the Respondent set up a false email domain that appeared to be the email address of a former employee of the Complainant. The Complainant contends that the Respondent used the Domain Name to attempt to deceive third-party vendors into shipping products to the Respondent on credit. The Complainant submitted evidence in support of this contention. The Complainant alleges that this fraudulent and criminal use of the Domain Name satisfies and "far exceeds" the requirements for bad faith use of a domain name. B. Respondent
The Respondent did not file a response with respect to this proceeding. 6. Discussion And Findings
Paragraph 4(a) of the Policy states that the domain name holder is required to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent's default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above-listed elements are present. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Marks. The Panel further notes that the registration dates for the Complainant's Marks well pre-date the registration date of the Domain Name.
A review of the second-level domain of the Domain Name shows that it consists of the word portion of the mark NCI and design in its entirety in combination with the descriptive terms "GROUP" and "INC" and is also identical to the Complainant's trade name. The addition of the descriptive terms "GROUP" and "INC" to the Complainant's Marks does not distinguish the Domain Name from the Complainant's Marks. Further, the addition of the terms "GROUP" and "INC" to the Complainant's Marks creates a Domain Name that is identical to the Complainant's legal name and thus results in further confusion between the Domain Name and the Complainant and the Complainant's Marks.
Based on the Complainant's U.S. trademark registrations and trade name and longstanding rights and use thereof coupled with the Complainant's own domain name and web site at , it is apparent that Internet users will and have clearly associated the Complainant with this Domain Name. The Panel therefore determines that the Domain Name is confusingly similar to the Complainant's Marks and trade name and that paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's use 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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has shown that it has well and long established rights to the Complainant's Marks at the time of the Respondent's registration of the Domain Name on November 21, 2014. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. In addition, no evidence has been presented that the Respondent has ever been known under the Domain Name or has ever asked for or been given permission by the Complainant to register or use any domain name incorporating the Complainant's Marks in any fashion.
The Complainant has presented sufficient evidence establishing that the Respondent is using an email address incorporating the Domain Name to fraudulently represent herself as an employee of the Complainant in order to place orders for computers from third-party vendors. The evidence presented by the Complainant and the Panel's observations that the Domain Name is not linked to an accessible website clearly establish no type of bona fide offering of goods or services is being provided by the Respondent. Nor is there any type of legitimate noncommercial or fair use of the Domain Name by the Respondent.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 website or location or of a product or service on the holder's website or location.
Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had knowledge of the Complainant's Marks and trade name when registering the Domain Name. This finding is clearly supported by the evidence showing that the Domain Name was registered well after the Complainant began use of the Complainant's Marks and trade name. Furthermore, the evidence shows that the Respondent had been using the Complainant's trade name and address in its email correspondence and dealings with third-party vendors in an attempt to place fraudulent orders. This evidence therefore shows that the Respondent was well aware of the Complainant's business, the Complainant's Marks, its trade name and its domain name. Based on this cumulative evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her online presence via emails incorporating the Domain Name thereby creating a likelihood of confusion with the Complainant's Marks and name as to the source, sponsorship, affiliation or endorsement thereof.
The Complainant also contends that the Respondent's bad faith is shown by her use of false contact information in the Domain Name registration. The Panel agrees that the Respondent's use of false contact information in registering the Domain Name to conceal her identity is additional proof of the Respondent's bad faith registration and use of the Domain Name.
The Panel thus concludes that the Respondent registered and is using the Domain Name in bad faith and that Paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Date: March 24, 2015
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