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and Mediation Center
NeuStar, Inc. v. InstantRegister.com
Case No. D2006-0816
1. The Parties
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 InstantRegister.com, London, United Kingdom of Great Britain
and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <neustar.net> is registered with eNom.
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 eNom a request for registrar verification in connection with the domain name at issue. On June 29, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming the Respondent’s contact details. 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 by courier, facsimile and email, and the proceedings commenced on July 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 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 June 19, 2003. The domain name currently resolves to a website which declares at the top “this domain name is for sale fill out the form below”. Beneath the “form”, appear a range of “Search Suggestions” and what appear to be links to advertisers under the heading “Try searching these categories”.
As noted above, the Respondent is InstantRegister.com.
A whois search of that domain name provides the same registrant and contact
details as registered for the Respondent. That domain name itself resolves to
a website which offers domain registration and related services from “just
$15.00 a year”. The domain name InstantRegister.com was registered on
June 8, 2002, according to the whois report.
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, her or 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 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).
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 “.net” 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 d/b/a Pottery Barn v. John Zuccarini,
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) 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.
The Complainant positively denies that it is in any way related to the Respondent or has in any way licensed or consented to the Respondent’s use of the domain name.
The domain name is not derived in anyway from the Respondent’s name, “InstantRegister.com”, as provided in the whois details. It has no obvious connection with any of the search categories listed on the website to which the domain name currently resolves.
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.
Accordingly, the Panel finds that the Complainant has established for the purposes of applying the Policy in this case that the Respondent does not have rights 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 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.
Given that the Respondent operates a domain name registration business and commenced it well after the Complainant commenced its operations, it seems highly unlikely that the Respondent was not aware of the Complainant’s name and activities by reference to Neustar. Further, the Respondent is blatantly offering the domain name for sale on the website to which the domain name resolves.
In these circumstances, the Panel has little difficulty
in concluding that the Respondent has registered and used the domain name in
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.net>, be transferred to the Complainant.
Warwick A. Rothnie
Date: August 24, 2006