Prommisor.com

The timeline behind prommisor.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Promissor v. Web Domain Names Claim Number: FA0410000346305 PARTIES Complainant is Promissor (“Complainant”), represented by Paul Millhouser, 222 Berkeley St., Boston, MA 02116. Respondent is Web Domain Names (“Respondent”), 777 Mo Xue Fang Road, Shanghai, PR, CN 435002. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <prommisor.com>, registered with Moniker Online Services, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2004. On October 18, 2004, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <prommisor.com> is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 October 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@prommisor.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 29, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <prommisor.com> domain name is confusingly similar to Complainant’s PROMISSOR mark. 2. Respondent does not have any rights or legitimate interests in the <prommisor.com> domain name. 3. Respondent registered and used the <prommisor.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Promissor, owns trademark rights for PROMISSOR through registration with the United States Patent and Trademark Office (e.g., Reg. No. 2,848,613, issued June 1, 2004). Complainant’s trademark registrations are for the use of the mark in connection with inter alia, books, newsletters, pamphlets, manuals and guides in the field of test development, assessment and analysis, printed test forms, test booklets, printed certificates and consulting in professional occupational and vocational testing. Although Complainant’s trademark registration was issued on June 1, 2004, Complainant filed for trademark registration on July 10, 2002, thereby pre-dating Respondent’s registration of the <prommisor.com> domain name. Respondent registered the <prommisor.com> domain name on November 14, 2002 and is using the domain name to divert Internet users to a commercial website providing links to services that are similar to Complainant’s. The <prommisor.com> domain name also hosts numerous pop-up advertisements and provides links to Complainant’s competitors. 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 has established rights in the PROMISSOR mark under the Policy as a result of its registration of its mark with the United States Patent and Trademark Office. 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 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.”). Complainant contends that the Respondent’s <prommisor.com> domain name is confusingly similar to Complainant’s PROMISSOR mark because the only difference between the disputed domain name and Complainant’s mark is the omission of the letter “s” and addition of the letter “m.” The disputed domain name is, in essence, a common misspelling of Complainant’s mark. The Panel finds that Respondent’s <prommisor.com> domain name is confusingly similar to Complainant’s PROMISSOR mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks; see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark; see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark BEANIE BABIES. Furthermore, the addition of the generic top level domain “.com” is not sufficient to distinguish the disputed domain name from Complainant’s mark. 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 Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants". Complainant has established Policy ¶ 4(a)(i). Rights or Legitimate Interests Respondent has failed to file a Response to the Complaint. Therefore, Respondent may be considered to have implicitly admitted that it lacks rights to and legitimate interests in the <prommisor.com> 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where Respondent fails to respond. The fact that Respondent uses a domain name that is confusingly similar to Complainant’s PROMISSOR mark to host pop-ups and links to businesses that offer competing services in the educational testing field, does not evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services; see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods. Furthermore, there is nothing in the record that indicates that Respondent is commonly known by the <prommisor.com> domain name pursuant Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply; 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. Therefore, Complainant has established Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent has registered and used a domain name that is confusingly similar to Complainant’s mark for the purpose of directing Internet users to businesses that offer competing services with those services offered by Complainant. Respondent’s use of the <prommisor.com> domain name establishes that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business; see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business; see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii). Likewise, such use establishes that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website; see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market; see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant. Complainant has established 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 <prommisor.com> domain name be TRANSFERRED from Respondent to Complainant. Sandra Franklin, Panelist Dated: December 6, 2004 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.