WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Finderbinder v. Adminstrator, Domain / Namia
Case No. D2007-1815
1. The Parties
Complainant is Finderbinder, Spain, represented internally.
Respondent is Adminstrator, Domain / Namia, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <finderbinder.com> (the “Domain Name”) is registered with Rebel.com Services Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2007. On December 10, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2007, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed two amendments to the Complaint on December 27, 2007, and on January 3, 2008. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on January 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 25, 2008.
The Center appointed Assen Alexiev as the sole panelist in this matter on February 5, 2008. 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.
On February 15, 2008, the Panel issued its Procedural Order No.1, whereby it invited Complainant to submit evidence as to the registration and use of the trademark FINDERBINDER and its rights in the same trademark. On February 16, 2008, Complainant filed a submission in response to Procedural Order No.1. Although invited to do so, Respondent chose not to submit any comments to Complainant’s submission.
In relation to the proper Respondent in this administrative proceeding, the Panel noted the following:
The person named as Respondent in the initial Complaint was Namia, Cayman Islands. The Registrar confirmed that the actual registrant of the Domain Name is Adminstrator, Domain, Cayman Islands.
Both Namia and Adminstrator, Domain, are located in the Cayman Islands, and share the same physical and e-mail addresses.
Complainant has requested that both Namia and Adminstrator, Domain, remain respondents in this proceeding, and neither of them has objected, or, indeed, filed any Response.
Therefore, and in the lack of any evidence to the contrary, the Panel has decided that Namia and Adminstrator, Domain are to be regarded as a single Respondent for the purposes of the present proceeding.
4. Factual Background
The FINDERBINDER trademark is registered in the United States of America, with Reg. No. 1,907,317 for goods and services in class 16. The owner of this trademark is Complainant’s President and owner, Mr. Gary Beals, who has de facto licensed the trademark to Complainant. The Complainant is doing business in the business communication field.
The Domain Name was first registered by Complainant on July 23, 1996. In August 2007, Respondent was registered as registrant of the Domain Name.
5. Parties’ Contentions
Complainant contends that the trademark FINDERBINDER is used in the marketing of goods or services related to directories and catalogs of business information, most specifically news media data for use by marketing, advertising and public relations specialists. The FINDERBINDER brand of news media directories with electronic supplements is currently sold throughout the United States of America, and is the top local or state-wide news media information system in the United States.
According to Complainant, the FINDERBINDER name and mark are known in the U.S. business communication field, and Complainant and its franchisees enjoy a strong reputation built over more than 30 years. The approximate worldwide advertising and promotional expenses related to trademarks containing FINDERBINDER, incurred by the Complainant and its franchisees since 1975, are in excess of US Dollars 100,000 annually. The estimated value of the FINDERBINDER brand, based on historical sales of products, is US Dollars 12,000,000.
Complainant created and registered the Domain Name using the FINDERBINDER trademark more than 11 years ago, and maintained at it a well-established and constantly operated website until 2007. Due to a technical problem in August 2007, Complainant was unable to renew its registration, and the Domain Name was transferred to Respondent without Complainant’s consent.
The Domain Name is identical to the FINDERBINDER trademark in which Complainant has rights. As a result of Complainant’s involvement in providing news media information for more than 30 years, consumers in business and non-profit fields may be led to believe that the Domain Name is related to Complainant.
Complainant states that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent was never granted a license, permission or other right to use any domain name incorporating Complainant’s well-known FINDERBINDER mark. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services. Respondent has never been known by the Domain Name or by the FINDERBINDER trademark, and Respondent has acquired no trademark or service mark rights to the FINDERBINDER name in any form. Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
As contended by Complainant, Respondent is using the Domain Name to direct Internet traffic to a commercial website that appears to be gathering personal data from participants for marketing, advertising and promotional purposes. Bad faith is evidenced by Respondent’s use of the Domain Name to attract and divert web traffic to an apparently commercial website. Complainant cites PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, where the use of domain names to capture goodwill of a trademark and profit from the goodwill associated with complainant’s sponsorship was found to be in bad faith.
According to Complainant, since the FINDERBINDER mark is famous within the field of marketing and Respondent has no rights in it, the only reason why Respondent could have wanted to register and use the Domain Name fully incorporating the FINDERBINDER trademark was that it knew of this mark and wanted to use it to confuse Internet users and divert them to another website for their own benefit and profit, and not for any legitimate noncommercial or fair use purpose. Respondent must have been aware that in registering the Domain Name it was misappropriating the valuable intellectual property of Complainant. Having regard to the fame of the FINDERBINDER trademark, use of the Domain Name would always give rise to an assumption of an association between Respondent and Complainant or its FINDERBINDER trademark.
In Complainant’s submission, the fact that Respondent has registered, without authorization, a domain name that fully incorporates Complainant’s well-known FINDERBINDER mark, despite being aware of Complainant’s rights in that mark, is in itself evidence of bad faith. Veuve Cliquot Ponsardin, Maison Fondeée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Complainant contends that having regard to the fame in the communications field of the FINDERBINDER trademark, the Domain Name is not one which another trader would legitimately choose unless it sought to create an impression of association with Complainant or with its franchisees, or attract business from Complainant, or misleadingly divert customers from Complainant to Respondent. By using the Domain Name, Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) 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
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name”.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
In the event of a default, under Rules, Paragraph (14)(b): “the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided information for the registration and use of the trademark FINDERBINDER in the United States of America. This information is confirmed by the Trademark Electronic Search System (TESS) of the United States Patent and Trademark Office “http://www.uspto.gov”. The holder of the trademark registration is Complainant’s owner and President, Mr. Gary Beals, and Mr. Beals has filed the Complaint on behalf of Complainant. Therefore, the Panel is satisfied that Complainant has demonstrated rights in the trademark, in that its owner and President has de facto licensed the trademark to Complainant.
Furthermore, Complainant has contended to have used the trademark for about 30 years to designate its services in the business communication field. This information coincides with the date of first use in commerce for the trademark provided through the TESS, and is sufficient for the Panel to accept that FINDERBINDER is a popular media product, and hence the trademark is known among its target consumers.
It is an established practice under the UDRP to disregard the suffixes such as “.com” for the purposes of the comparison under Policy, paragraph 4(a)(i), so the relevant part of the Domain Name to be considered, is the sequence “finderbinder”. This sequence is identical to the trademark FINDERBINDER of Complainant. Therefore, the Panel finds the Domain Name to be identical to a trademark, in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in Domain Name, stating numerous arguments in this regard.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.
Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for the registering or using the disputed Domain Name, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) - or any other circumstance - is present in its favour.
In fact, the only information available about the Respondent is the whoIs information, provided by the Registrar, and the content of the website, associated with the Domain Name.
The whoIs information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, apart from its rights as registrant of the latter.
The website associated with the Domain Name appears to be commercial, and includes offers for various products.
Is such an offering of goods or services bona fide under Rules, paragraph 4(c)(i)? The answer to this question depends on the finding whether the use of the disputed Domain Name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith).
The Panel concludes that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services. It is a clear inference from the record that Respondent is likely to have known at the time of the transfer of the Domain Name to it that Complainant had established rights in the FINDERBINDER mark. The Complainant has made a substantial showing that FINDERBINDER is a popular mark in the United States, and in any event the mark is clearly distinctive. The Respondent simply has no legitimate interest in using the FINDERBINDER mark as part of a domain name that directs Internet users to a website where products unrelated to Complainant are offered for sale. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. Accordingly, the finding by the Panel regarding Respondent’s bad faith registration and use of the disputed Domain Name precludes a finding that the offering of goods or services by Respondent is bona fide. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.
Therefore, as the evidence supports the contentions of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In the present proceeding, Respondent did not itself register the Domain Name, rather, it is only a transferee. That is the reason why the doctrine of “extension” can be invoked here, that is, that the term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the Domain Name. Thus, Policy, paragraph 4(b)(i) specifically refers to circumstances in which Respondent has registered or has acquired a domain name, and there are prior Panel decisions in which it has been held more generally that “registration” extends to subsequent acts of acquisition. BWR Resources Ltd v. Waitomo Adventures Ltd., WIPO Case No. D2000-0861, Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, and Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. Therefore, for the purposes of the Policy, the acquisition by a party of a domain name amounts to a new registration, and is analyzed by application of the same criteria.
The Complainant has made a showing of its presence in the media information business for many years. The use in commerce of the trademark FINDERBINDER is claimed to have started in 1978. Therefore, the Panel is satisfied that Complainant has proven the use of the trademark for 30 years, and finds that FINDERBINDER is a popular trademark and media product, known among its consumers.
The Domain Name is identical to the distinctive trademark FINDERBINDER, which suggests that Respondent must be aware of the goodwill of the trademark and its commercial value.
These facts support a finding that Respondent had knowledge of the FINDERBINDER mark at the time of the transfer of the Domain Name, and that Respondent is using the Domain Name to attract Internet users to a commercial website where products unrelated to Complainant are offered for sale. In all likelihood, Respondent’s primary purpose in registering and using the Domain Name was to attract, for commercial gain, Internet users to this website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the products on this website. This constitutes bad faith registration and use of the Domain Name under Policy, paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408.
Therefore, the Panel concludes that the Complainant has established the third element of the test under Policy, paragraph 4(a).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <finderbinder.com> be transferred to Complainant.
Dated: February 25, 2008