#Novacap : 30 year old company forgot to renew #domain

Knowles Cazenovia, Inc., is a ceramic capacitor manufacturer of more than 30 years, under the Novacap brand.

They registered a trademark for NOVACAP in 2008, and held the .com until late 2017, when they somehow forgot to renew it.

Registered in 1996, the domain Novacap.com was auctioned off on NameJet, where it sold for $3,333 dollars on 10/12/2017, according to Namebio.

Fast forward a few months later, and the new registrant was hit with a UDRP at the National Arbitration Forum.

In their response, the Respondent stated that they acknowledge the Complainant’s mark, however:

[…] the mark is not unique to the Complainant as a domain name. In fact, the term ‘NOVACAP’ has been used by various entities as a part of their domain names in connection with different goods and services provided by them.

Regarding the Respondent’s function and intentions for the domain Novacap.com:

Respondent is a domain name broker engaged in the business of brand consultation for start-ups and companies. In relation to its work, Respondent engages in acquisition and representation of domain names and assists companies globally to secure domain names, websites and other digital intellectual property in order to develop brands for start-ups and companies in various fields.

Anne M. Wallace, QC, Panelist delivered  decision benefiting the Complainant, and ordered the transfer of the domain Novacap.com to them.

Full details of this UDRP decision follow:

Knowles Cazenovia, Inc. v. Bindal, Prakhar

Claim Number: FA1803001774773

PARTIES

Complainant is Knowles Cazenovia, Inc. (“Complainant”), represented by Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Bindal, Prakhar (“Respondent”), India.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <novacap.com>, registered with Network Solutions, LLC.

PANEL

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

Anne M. Wallace, QC, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.

On March 6, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <novacap.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@novacap.com. Also on March 7, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on April 2, 2018.

On April 9, 2018, the Complainant sent a timely Additional Submission.

On April 3, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, QC, 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant submits:

Complainant has become a world leader in the design, manufacture, and making of precision devices such as hearing aid components, microphones, and capacitors. Complainant’s innovative products are used in more than 70 percent of hearing health products and 60 percent of mobile devices in the market. Complainant has rights in the NOVACAP mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,501,146, registered Sep. 16, 2008). Respondent’s <novacap.com> domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and appends the generic top-level domain (“gTLD”) “.com.”

Respondent has no rights or legitimate interests in the <novacap.com> domain name:
Respondent is not commonly known by the disputed domain name as the WHOIS information lists Respondent as “Prakhar Bindal.”

Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent redirects users to a parked webpage with competing hyperlinks where Respondent generates click-through revenue.

Respondent’s willingness to sell the domain name indicates that Respondent registered the domain name for the purpose of reselling it to Complainant or a competitor.

Respondent registered and uses the <novacap.com> domain name in bad faith:
Respondent is offering to sell the domain name for between $11,500 and $18,500.
Respondent has been the subject of at least six other UDRP proceedings in which bad faith was found.
Respondent intentionally attempts to disrupt and compete with Complainant’s business by advertising links that redirect to websites offering competing products.
Respondent uses the domain name to intentionally attract consumers to its website, for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website.
Respondent knew of Complainant’s rights in the NOVACAP mark due to the goodwill established by Complainant.

B. Respondent

Respondent submits:

While Respondent admits Complainant does have rights in the NOVACAP mark, the mark is not unique to the Complainant as a domain name. In fact, the term ‘NOVACAP’ has been used by various entities as a part of their domain names in connection with different goods and services provided by them.

Respondent is a domain name broker engaged in the business of brand consultation for start-ups and companies. In relation to its work, Respondent engages in acquisition and representation of domain names and assists companies globally to secure domain names, websites and other digital intellectual property in order to develop brands for start-ups and companies in various fields.

Complainant did previously own the disputed domain name; however after showing no interest in the disputed domain name during the thirty day grace period to renew the domain name, Respondent decided to purchase it to further Respondent’s business. Respondent legitimately purchased the domain name on October 24, 2017. Since Respondent has owned the domain name, Respondent has not made any changes to the resolving webpage, as the content is the same content as when the registrar sold it to Respondent.

Respondent did not register the disputed domain name in bad faith. While Respondent registered the domain name with the purpose of reselling it, it did not intend to sell it to Complainant or its competitors. Rather, Respondent engages in the business of assisting start-up companies with an online presence, and registers domain names to help further their businesses.

The disputed domain name has not been used in connection with a parking page generating click-through revenue, as Respondent has not put the resolving domain to use.
Complainant is engaging in reverse domain name hijacking.

Additional Submissions

Complainant submits:

Complainant was unaware that the registration for the disputed domain name lapsed until after Respondent purchased it.
Respondent knew or should have known that the disputed domain name was identical to Complainant’s mark
The fact Respondent is a domain name broker does not excuse his behavior or negate the fact that Respondent registered the disputed domain name in bad faith absent any rights or legitimate interests.
The presence of similar domain names does not authorize Respondent’s behavior.

FINDINGS

1. Complainant has established rights in the NOVACAP mark.

2. Respondent’s <novacap.com> domain name is confusingly similar to Complainant’s NOVACAP mark.

3. Respondent has no rights or legitimate interests in the <novacap.com> domain name.

4. Respondent registered and is using the <novacap.com> domain name in bad faith.

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.”

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 claims rights in the NOVACAP mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,501,146, registered Sep. 16, 2008). Registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015), where the panel says “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.” Complainant has therefore established rights in the NOVACAP mark for the purposes of Policy ¶ 4(a)(i).

Complainant next argues that Respondent’s <novacap.com> domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and merely appends the gTLD “.com.” Similar changes to a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The only difference between the the <novacap.com> domain name and the NOVACAP mark is the addition of the gTLD “.com.” Complainant has established that the disputed domain name is confusingly similar to its mark under Policy ¶4(a)(i).

While Respondent contends that the <novacap.com> domain name is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant contends that Respondent has no rights or legitimate interests in the <novacap.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Bindal, Prakhar” as the registrant. There is no evidence before the Panel to establish that Respondent or his business, Nakekart Private Limited, have ever been legitimately known by the NOVACAP mark. This evidence shows lack of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel agrees that Respondent is not commonly known by the <novacap.com> domain name under Policy ¶ 4(c)(ii).

Complainant also argues that Respondent uses the disputed domain name to resolve to a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from click-through fees. Using a domain name to offer links to services in direct competition with a complainant generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage, which contains links such as “Mechanical Engineer Jobs” and “High Voltage Capacitors.” The Panel finds on this basis that Respondent’s domain contains various hyperlinks which redirect users to competitive services. This raises the inference that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).

Lastly, Complainant claims that Respondent offers the <novacap.com> domain name for sale. Offering a confusingly similar domain name for sale to the public can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides evidence of this offer to sell the domain name on <afternic.com>, where the domain name has a listing price of $18,500. In light of this, the Panel agrees that Respondent’s offer of the disputed domain name for sale raises an inference of lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).

On the basis of these factors, Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden now shifts to Respondent.

Respondent argues that the terms of the <novacap.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent has not provided any cogent evidence that NOVACAP is a generic term. Respondent provides a list of domain names that he claims are similar to Complainant’s mark. Complainant points out and the Panel agrees, that the U.S. trademark registration establishes Complainant’s rights in the mark. In addition, the majority of the domain names listed in the Response include additional terms, such as “capital” in “novacapital,” that are distinguishable from the NOVACAP mark. Regardless, Respondent’s argument is irrelevant because Complainant’s decision not to file complaints against others has no bearing on these proceedings where Complainant’s mark is NOVACAP and the disputed domain is “novacap.com” – the mark is identical to the domain name. Even if there had been unauthorized third party use of the trademark, which is not the case here, it would not excuse Respondent’s unauthorized use. See Metro. Life Ins. Co. v. Interpress Inc., FA 9082 (Forum Nov. 22, 2011) (finding complainant’s decision not to file complaints against others with similar or identical domain names has no bearing on these proceedings); see also Yahoo! Inc. v. Gianluca Deiana d/b/a Ayhooo Inc., FA339579 (Forum Nov. 22, 2004) (“Respondent’s arguments that there are numerous unchallenged domain names similar to Complainant’s name is without merit”).

Respondent submits that it engages in acquisition and representation of domain names and assists companies globally to secure domain names, websites and other digital intellectually property in order to develop brands for start-ups and companies in various fields. A respondent can be found to have rights and legitimate interests in a domain name where it engages in the business of registering domain names for the purposes of selling them to third parties. Respondent claims that while Complainant did previously own the domain name, Complainant showed no interest in the domain name during the thirty day grace period to renew the domain name, so Respondent legitimately purchased the domain name on October 24, 2017.

Whether the domain name had lapsed or had never been registered in the past, the same rules apply. If the complainant has rights in the mark and the respondent does not have rights, the mere purchase of the domain name does not give the respondent rights or legitimate interests.

Respondent says that since Respondent has owned the domain name, Respondent has not made any changes to the resolving webpage, as the content is the same content as when the registrar sold it to Respondent. Respondent argues that simply hosting a parked webpage is not necessarily indicative of a lack of rights and legitimate interests in a domain name. See INVESTools Inc v. KingWeb Inc., FA 598845 (Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)).

Respondent claims he has no control over and does not profit from the content on the disputed domain name. However, panels have consistently held that a respondent is ultimately responsible for the manner in which the domain name is used. For example, one panel stated, “as a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.” Yogurtland Franchising, Inc. v. IT Admin., FA 1293617 (Forum Dec. 9, 2009) (finding no legitimate rights even where Respondent alleged it had no control and gained no profit from the parking page). The fact remains, as alleged in the Complaint, that the disputed domain name links to third party websites that sell competitive goods, disrupting and competing with Complainant’s business. Despite Respondent’s arguments to the contrary, case law clearly states that as the registrant of the disputed domain name, Respondent is responsible for the content on the domain name’s website.

Respondent has failed to meet the burden to establish it has rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Complainant claims that Respondent offers to sell the <novacap.com> domain name for between $11,500 and $18,500. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the <afternic.com> domain name associated with the at-issue domain name, which shows a listing price of $18,500. On this basis, the Panel finds Respondent’s offering of the domain name for sale to the general public to be evidence of bad faith registration and use under Policy ¶ 4(b)(i).

Complainant also argues that Respondent registered the <novacap.com> domain name in bad faith because Respondent has prior adverse UDRP decisions against it. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant here has shown that Respondent has been a party to at least six prior UDRP proceedings in which bad faith was found. Based on this evidence the Panel is satisfied Respondent has engaged in a pattern of conduct sufficient for a finding of bad faith under Policy ¶ 4(b)(ii).

Complainant argues that Respondent also registered and uses the <novacap.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). The screenshot of the resolving webpage associated with the domain name shows that the webpage contains links to services such as “Mechanical Engineer Jobs” and “High Voltage Capacitors.” The Panel therefore finds Respondent uses the domain name to display hyperlinks to competing services thereby attempting to disrupt Complainant’s business and attempting to commercially benefit from Complainant’s mark. This is bad faith under Policy ¶¶ 4(b)(iii) & (iv).

Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the NOVACAP mark at the time of registering the <novacap.com> domain name. Actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent knew of Complainant’s rights in the NOVACAP mark due to the goodwill established by Complainant. There is no direct evidence before the Panel, however, to establish actual knowledge of Complainant’s mark. That, however, does not end the matter.

Complainant asserts that a simple Internet search for “novacap.com” would have resulted in links to Complainant’s NOVACAP trademark and product. Given Respondent claims he is in the business of “brand consulting and aiding startup companies,” presumably, a simple use investigation would have been conducted. Failure to conduct even a rudimentary online search (which would have revealed Knowles and its NOVACAP brand) demonstrates an intentional willful blindness and/or calls into question the claim that Respondent is a brand consultant and aids start-up companies. Here, Respondent either knew the disputed domain name was identical to a registered trademark or neglected to perform a simple Internet search. Either way, Respondent failed to discharge his duty to select, register, and use a domain name that does not infringe the rights of a third party. Traction Corp. v. Ken Zi Wang, FA 1750913 (Forum Oct. 23, 2017) (finding even if there was no actual knowledge of the registered trademark, the respondent had a duty to investigate prior to registering the domain name). The Panel largely agrees with Complainant’s submission on this point. Respondent’s intentional willful blindness to Complainant’s mark is evidence of bad faith.

For all the foregoing reasons, the Panel finds Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

The Panel finds that Complainant has satisfied all the elements of the Policy. As such, Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

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 <novacap.com> domain name be TRANSFERRED from Respondent to Complainant.

Anne M. Wallace, QC, Panelist

Dated: April 16, 2018

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