Complainant is NCI Group, Inc. of Houston, Texas, United States of America (“United States”), represented by Bracewell L.L.P., United States.
Respondent is Natasha Madov of Brooklyn, New York, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 15, 2016.
On July 7, 2016, the Center received a phone call from an individual who indicated she was Natasha Madov, but also claimed that she had not registered the domain name, and that she did not use the phone number or email address indicated in the Written Notice she received by courier. The Center emailed the Parties on July 8, 2016, notifying them of the Respondent identification issue.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 26, 2016. 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
Complainant has been doing business as NCI Building systems for approximately twenty-five years. Respondent has trademark registrations with the USPTO for the marks NCI BUILDINGS GROUP, NCI, and NCI BUILDING COMPONENTS, the latter two registrations issuing on January 7, 1997. Complaint, Annex 6. Complainant is in the business of operating wholesale distributorships of metal building products. Id. Complainant is the registrant of the domain name whose registration predates the registration of the disputed domain name by more than a year. Complaint, Annex 5.
Respondent registered the disputed domain name on May 26, 2016. Complaint, Annex 1. Respondent used the disputed domain name to attempt to buy equipment on credit under Complainant’s name. Complaint, Annex 7. 5. Parties’ Contentions A. Complainant
Complainant contends that the domain name at issue is confusingly similar to the trademarks in which Complainant has rights and is identical to, other than the insertion of a hyphen, to Complainant’s registered domain name, that Complainant has no right or legitimate interest in respect of the domain name at issue and has not been authorized by Complainant to use its trademarks or its domain name, and that Respondent has registered and is using the domain name at issue in a fraudulent scheme to obtain credit, including by the forging of the name of Complainant’s CFO in order to obtain credit under Complainant’s name for the purchase of goods from third parties. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
1) that 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,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The domain name at issue consists of Complainant’s registered domain name with a hyphen inserted between “ncibuilding” and “systems” and incorporates Complainant’s NCI mark and portions of Complainant’s NCI BUILDINGS GROUP and NCI BUILDING COMPONENTS marks. Accordingly, the Panel finds that the disputed domain name is confusingly similar to marks in which Complainant has rights. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Respondent has used the disputed domain name to falsely portray itself as Complainant, to forge the name of Complainant’s CFO, and to seek to obtain goods on credit by representing to third parties that it is Complainant. Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith. 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: July 26, 2016
Full & Egal Universal Law Academy