DECISION

INVISTA Technologies S.+r.l. v. Global Media Production

Claim Number:  FA0405000275435

PARTIES

Complainant is INVISTA Techologies S.+r.l. (“Complainant”), represented by Russell M. Racine of Dougherty, Clements, Hofer & Bernard, 1901 Roxborough Rd., Ste. 300, Charlotte, NC, 28211.  Respondent is Global Media Production (“Respondent”), 41 West 86th St., Ste. 2j, New York, NY, 10024.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <avora.com>, registered with Network Solutions, Inc.

PANEL

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

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically May 21, 2004; the Forum received a hard copy of the Complaint May 24, 2004.

On May 25, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <avora.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 16, 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@avora.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 June 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <avora.com>, is identical to Complainant’s AVORA mark.

2. Respondent has no rights or legitimate interests in the <avora.com> domain name.

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

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

FINDINGS

Complainant (through its assignor) registered the AVORA mark with the United States Patent and Trademark Office (“USPTO”) on March 6, 2001 (Reg. No. 2,433,932, filed August 17, 1998) for use in connection with “flame resistant fibers used in the manufacture of fabrics.”  Complainant began using the AVORA mark in commerce in September 1998.

Complainant hired Respondent through various subcontractors to create and/or register the disputed domain <avora.com> for Complainant’s business.  Respondent registered the disputed domain name November 16, 1998; but listed the registrant’s name in the WHOIS information as “Global Media Production” and listed “Carlos Diaz” as the administrative contact.  The record does not explicitly state how the domain name is currently being used; but Complainant’s submission supports inferences that Diaz and Global Media Production are either withholding it from Complainant or holding it passively at this time to prevent Complainant from using the domain name. 

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

As the result of its registration of the AVORA mark with the United States Patent and Trademark Office, Complainant established using extrinsic proof in this proceeding that it has rights in the mark under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The disputed domain name <avora.com> is identical to Complainant’s AVORA mark because the domain name contains Complainant’s mark in its entirety and merely adds the top-level domain “.com,” which is irrelevant under the Policy.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, Complainant met the requirements of Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established by extrinsic proof in this proceeding that it has rights and legitimate interests in the AVORA mark, contained in its entirety in the <avora.com> domain name that Respondent registered.  Respondent did not respond to the Complaint.  Therefore, the Panel may accept as true all reasonable inferences of fact from Complainant’s allegations.  See 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); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it considers appropriate, if Respondent fails to comply with the Panel's requests for information). 

The fact that Respondent has not responded to the Complaint may also be construed as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

In the instant case, Complainant alleged that Respondent is not commonly known by the disputed domain name <avora.com>.  The Panel accepts this assertion as true because on the face of the record, <avora.com>, and Global Media Production are distinctly different identifications.  Further, Respondent filed nothing to show that avora.com has acquired secondary meaning specific to Global Media Production.  See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  Further, given Complainant’s existence prior in time to Complainant’s contract with Global Media Production, it is highly unlikely that Respondent could show that it was known by Complainant’s mark prior to the registration of the domain name.

Respondent is wholly appropriating Complainant’s mark by its registration of the disputed domain name.  Respondent apparently has no involvement with the website other than being listed as the registrant.  The Panel finds that holding a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).

Furthermore, Respondent acted merely as an agent for Complainant when it registered the disputed domain name.  Respondent's agency relationship with Complainant is evidence that Respondent was aware of Complainant's rights in the domain name and the AVORA mark.  Thus, Respondent knew when it registered the disputed domain name on behalf of Complainant that Respondent would not hold any rights or legitimate interests in the domain name.  Respondent should have registered the domain name with Complainant named as the registrant.  Therefore, the Panel finds that Respondent's former agency relationship with Complainant is insufficient to establish rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant's mark was in use as an integral part of the corporate name and as a trademark and that Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right.  This is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark).

Complainant has met the requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent intentionally registered the <avora.com> domain name that contains in its entirety Complainant’s mark.  Although Complainant hired Respondent to create or register the domain name, Respondent should have registered the domain name under Complainant’s name as registrant.  Respondent’s knowing registration of a domain name that is identical to Complainant’s mark and Respondent’s claim of ownership in that name constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because Respondent was hired by Complainant to help design and register Complainant’s websites, Respondent had intimate knowledge of Complainant’s business and use of its TEENFLO mark.  Therefore, Respondent’s registration of <teenflo.com> was in bad faith.).

Although the record does not indicate how the disputed domain name is currently being used, the record supports findings of bad faith.  The Panel finds that Policy ¶ 4(a)(iii) has been satisfied because Respondent could not possibly use the domain name in a manner that does not infringe upon Complainant's mark.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under the Policy even though Respondent had not used the domain name because "It makes no sense whatever to wait until it actually 'uses' the name, when inevitably, when there is such use, it will create the confusion described in the Policy"); see also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Furthermore, Complainant has not authorized or licensed Respondent to use the AVORA mark.  The Panel determines that Respondent knowingly registered Complainant’s protected mark in a domain name showing Respondent as the registrant although Respondent knew that it was acting as Complainant’s agent. Respondent had no rights to or interests in Complainant’s mark or the domain name. Respondent acted in bad faith when registering the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.”).

Complainant met the requirements of 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 <avora.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 9, 2004

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