DECISION

Netfast Communications, Inc. v. Modern Web Development

Claim Number:  FA0409000326215

PARTIES

Complainant is Netfast Communications, Inc. (“Complainant”), represented by Craig J.J. Snyder, 21-27 41st Street No. 2-C, Astoria, NY 11105.  Respondent is Modern Web Development (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <netfast.com>, registered with 123 Easy Domain Names d/b/a Signature Domains.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 13, 2004; the Forum received a hard copy of the Complaint on September 13, 2004.

On September 17, 2004, 123 Easy Domain Names d/b/a Signature Domains confirmed by e-mail to the Forum that the domain name <netfast.com> is registered with 123 Easy Domain Names d/b/a Signature Domains and that Respondent is the current registrant of the name. 123 Easy Domain Names d/b/a Signature Domains has verified that Respondent is bound by the 123 Easy Domain Names d/b/a Signature Domains registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@netfast.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <netfast.com> domain name is identical to Complainant’s NETFAST mark.

2. Respondent does not have any rights or legitimate interests in the <netfast.com> domain name.

3. Respondent registered and used the <netfast.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Netfast Communications, Inc. is the owner of United States Trademark Registration No. 2,787,827, issued December 2, 2003 for the NETFAST mark.  Complainant filed for the registration on December 17, 1999.  Complainant has used the NETFAST mark in connection with the business of installing and maintaining wide area computer networks for others, installing and maintaining computer systems, peripherals and Internet working equipment, namely, servers, work stations, multiplexers, transmission devices, terminal servers, bridges, routers and hubs for the past four years.

Respondent registered the <netfast.com> domain name on March 21, 2002 and is using the domain name to resolve to a generic search engine webpage providing links to a variety of websites. 

Respondent has been the subject of two domain name disputes in this forum, of which Respondent did not prevail.  Additionally, Respondent shares the same mailing address and e-mail address with Modern Limited – Cayman Web Development, a known cybersquatter that has been the subject of numerous domain name disputes, including Barrett Enter. Group v. Modern Ltd. – Cayman Web Dev., FA 162191 (Nat. Arb. Forum July, 28, 2003), Boehringer Ingelheim Int’l. GmBH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 3, 2003), Albertson’s Inc. v. Modern Ltd. – Cayman Web Dev., FA 178222 (Nat. Arb. Forum Sept. 30, 2003), Fresh Market, Inc. v. Modern Ltd. – Cayman Web Dev., FA 203205 (Nat. Arb. Forum Dec. 4, 2003), Stevens v. Modern Ltd. – Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004), Downey Communications, Inc. v. Modern Ltd. – Cayman Web Dev., FA 260657 (Nat. Arb. Forum June 8, 2004) and SiteComp, Inc. v. Modern Ltd. – Cayman Web Dev., FA 280552 (Nat. Arb. Forum July 12, 2004).  Modern Limited has registered numerous domain names that are either identical or confusingly similar to well-known marks and names belonging to third parties. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant established that it has rights in the NETFAST mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant’s rights in the NETFAST mark predate any rights Respondent may have in the domain name registration because Complainant filed for its trademark registration on December 17, 1999, over two years before Respondent’s registration of the disputed domain name.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Respondent’s <netfast.com> domain name is identical to Complainant’s NETFAST mark, and it is long established that the addition of the top-level domain “.com” does not add source-identifying significance to the domain name.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant asserts Respondent has no rights or legitimate interests in the domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, the Panel may accept all allegations and inferences in the Complaint as true because Respondent has not submitted a Response.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <netfast.com> domain name to redirect Internet users to a generic search engine webpage providing links to a variety of websites.  Respondent’s use of a domain name that is identical to Complainant’s NETFAST mark to redirect Internet users interested in Complainant’s products and services to a commercial website that offers a search engine unrelated to Complainant’s products and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Additionally, Respondent has not offered any evidence and there is no proof on the record to indicate that Respondent is commonly known by the <netfast.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent has been the subject of two domain name disputes in this forum, of which Respondent did not prevail.  Additionally, Complainant contends that Respondent shares the same mailing address and e-mail address with Modern Limited – Cayman Web Development, a known cybersquatter that has been the subject of numerous domain name disputes, including Barrett Enter. Group v. Modern Ltd. – Cayman Web Dev., FA 162191 (Nat. Arb. Forum July 28, 2003), Boehringer Ingelheim Int’l. GmBH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 3, 2003), Albertson’s Inc. v. Modern Ltd. – Cayman Web Dev., FA 178222 (Nat. Arb. Forum Sept. 30, 2003), Fresh Market, Inc. v. Modern Ltd. – Cayman Web Dev., FA 203205 (Nat. Arb. Forum Dec. 4, 2003), Stevens v. Modern Ltd. – Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004), Downey Communications, Inc. v. Modern Ltd. – Cayman Web Dev., FA 260657 (Nat. Arb. Forum June 8, 2004) and SiteComp, Inc. v. Modern Ltd. – Cayman Web Dev., FA 280552 (Nat. Arb. Forum July 12, 2004).  Modern Limited has registered numerous domain names that are either identical or confusingly similar to well-known marks and names belonging to third parties.  Respondent’s history of prior domain name disputes evidences bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that Respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of Respondent, revealing that Respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names).

Complainant intentionally registered a domain name that wholly incorporated Complainant’s NETFAST mark and did so for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users searching under Complainant’s NETFAST mark to Respondent’s commercial website through the use of a domain name that is identical to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <netfast.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  October 29, 2004

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