The Complainant is NeuStar, Inc., Sterling, Virginia, United States of America, represented by Katten Muchin Rosenman LLP, Washington, District of Columbia, United States of America.
The Respondent is Domain Deposit, Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name <neustar.org> is registered with Wild West Domains,
Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 29, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On June 29, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on July 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2006.
The Center appointed Warwick A. Rothnie as the sole
panelist in this matter on August 10, 2006. 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 was formed in November 1999 to carry on a telecommunications business which commenced operation in 1996. Amongst other things, it operates the call and signaling/routing registry for North America, manages the telephone numbering and number portability for the European Telephony Numbering Space and operates a clearing house for facilitating intercarrier and enterprise access service requests.
In 2000, the Complainant formed a joint venture with Melbourne IT to form NeuLevel Inc. which successfully tendered to operate the .biz domain name registry, one of the first “new” gTLDs created. In March 2006, the Complainant acquired the interest of Melbourne IT in NeuLevel.
Beginning in 2001, it became the domain name registry for the .us country code. Subsequently, it has also become the exclusive operator of the registry for .cn, .tw and the new .travel domain. In connection with these operations it operates and promotes a range of “BIZPromote” services intended to assist subscribers to increase traffic to their websites.
The Complainant first registered NEUSTAR as a trademark in the United States in 1999, Nos 2,525,756 and 2,697,124, in connection with computerized database management for telecommunications providers and clearinghouse transaction services. It has trademark registrations in Canada, the European Community, Norway and Switzerland. It also has a number of pending applications.
The Complainant has domain name registrations for <neustar.com>, <neustar.cn>, <neustar.us> and <neustar.tw> in addition to its primary registration of <neustar.biz>.
According to the whois report, the Respondent registered
the domain name on March 29, 2006. The domain name currently resolves to a website
which appears to be a fairly generic search site, providing links under the
headings “Top Categories” and “Popular Categories” to
“Nexstar”, “Nexstar”, “Used Laptop”, “Id
Bracelets”, “Hawaii Vacation Package”, “Airline Tickets”,
“Camping Tents”, “Back Support”, “Vacation Package”
and “Flight Reservation”. These in turn provide links to advertisers
of various products.
5. Discussion and Findings
There has been no Response. The address details used by the Center, however, have been confirmed as correct by Wild West Domains, the registrar. Accordingly, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, its case in rebuttal of the Complaint.
Paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the respondent does not submit a response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy the complainant has the burden of proof in respect of the following three elements:
(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.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
The Complainant has demonstrated ownership of the registered trademarks referred to in section 4 above, including the United States registration No. 2,525,756 and CTM No. 1487578.
The question of resemblance for the purposes of the Policy requires a comparison
of the domain name to the trademark rights which have been proved. This is a
different test to that involved in trademark law where questions of the goods
or services covered by the trademark rights can be relevant to the likelihood
of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini,
Cupcake City and Cupcake Patrol, WIPO
Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. The question
of the scope of the Complainant’s trademark rights may of course be relevant
to the issues under paragraphs 4(b) and 4(c) of the Policy.
Here, the disputed domain name is identical to the Complainant’s two registered trademarks, NEUSTAR, save for the addition to the domain name of the gTLD “.com” suffix.
The gTLD “.com” is a recognized label identified with particular
Internet functionality. It has been well established that such generic terms
should be disregarded for the purposes of the comparison. See for example Ticketmaster
Corporation v. DiscoverNet Inc.,WIPO
Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John
Zuccarini d/b/a Country Walk,WIPO
Case No. D2002-0582 for the inclusion of a gTLD.
Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark rights as the only distinguishing component of it is identical to the distinctive element of the Complainant’s trademarks.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) of the Policy sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
Here, the Complainant contends that the Respondent is not related in any way to it or its business. The Complainant contends further that it has not licensed its trademarks to the Respondent or otherwise granted its permission or consent to the use of NEUSTAR.
The only information available about the Respondent is that its name is “Domain Deposit”, and it has an address in Austria. (Some doubt may attend to that as the telephone number given by the Respondent in the whois record is +1.43000000 – 43 is the country code for Austria, but (1) is the usual “area” code for Vienna.) The Respondent has provided an email address for “domaindrops@[e-mail address]”.
The domain name is obviously not derived from any name that can be associated with the Respondent from the publicly available information.
The print outs of the Respondent’s website included in Exhibit 6 to the Complaint do include references to “Nexstar”. One of these includes links for external hard drives, Meade Telescopes and Telescopes, amongst other things, including Nexstar scopes. The other simply has a range of services from sponsored links for domain name registration, web hosting and the like.
While there is a letter difference between Neustar and Nexstar, there does not seem to be any natural derivation of one from the other. If one were operating a business under the name Nexstar, it is unlikely that one would chose Neustar as the domain name for the business.
The Complainant also claims that Neustar is a uniquely coined term. Like all the other allegations made by the Complainant, the Respondent has not sought to dispute this. Indeed, the first five pages (at least) of a simple Google search reveal references to no entity other than the Complainant for the word “Neustar”.
In these circumstances, the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the domain name. By failing to submit a response, the Respondent has not sought to rebut those allegations or to displace the prima facie case.
Panels have also recognised that the finding of rights or legitimate interests
can be influenced by the issues under the third paragraph – registration
and use in bad faith. See e.g. Telstra Corporation Limited v. Barry Cheng
Kwok Chu, WIPO Case No. D2000-0423;
ABB Asea Brown Boveri Ltd v. Yvonne Bienen, Bienen Enterprises, WIPO
Case No. D2002-0718. For the reasons discussed in section C below, the Panel
concludes that the Respondent has registered and used the domain name in bad
faith (as that term is understood under the Policy).
Accordingly, the Panel finds that the Complainant has established sufficiently for the purposes of the Policy that the Respondent does not have rights to or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and is being used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant contends that the Respondent has registered the domain name in a blatant attempt to trade on the renown associated with the Complainant’s trademarks.
The Respondent has not sought to deny the Complainant’s allegations.
As already noted, the website to which the domain name resolves appears to be a kind of generic search site or one which contains a series of links through to advertisers of goods and services.
The Policy does not prohibit the operation of such
a website or the registration of a domain name to operate such a website. What
the Policy does prohibit is the registration and use of a domain name which
is confusingly similar to someone else’s trademark with the intention
of trading on the reputation or goodwill of that trademark. Such use is not
bona fide in terms of the Policy. Nor is it bona fide where the
offering of goods for sale is a pretext to conceal the real purpose of the registration
of the domain name. See e.g. Telstra Corporation Limited v. Barry Cheng Kwok
Chu, WIPO Case No. D2000-0423 and
Magna International Inc. and Donnelly Corporation v Brian EvansWIPO
Case No. D2002-0898.
On the print out of the first page included in Exhibit 6 to the Complaint appears:
“Welcome
Need information about computers and technology? neustar.org has all everything [sic] you’re looking for. Whether you’re looking for reviews of the latest hardware, information about security and antivirus software, or just a place to chat about technology, you’ve come to the right place.
It is not clear why a site providing information about computers and technology would provide the links to telescopes – Meade or NexStar – already described above or, for that matter all the other links related to travel, finance, business or entertainment. It is also noteworthy that the Respondent purports to provide services, or links to services, for Domain Registration in prominent terms on the website under the “Welcome” notice as well as from the second of the “Nexstar” links also referred to above.
In these circumstances and in the absence of any convincing
explanation by the Respondent, the Panel finds that the domain name has been
registered and used in bad faith in accordance with paragraph 4(b) of the Policy.
7. Decision
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 <neustar.org> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: August 24, 2006
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