Nmc.com

The timeline behind nmc.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 Nebraska Machinery Company d/b/a NMC Group v. Domain Names Inc. Claim Number: FA0910001288075 PARTIES Complainant is Nebraska Machinery Company d/b/a NMC Group (“Complainant”), represented by Roberta L. Christensen of Koley Jessen P.C., L.L.O., Nebraska. Respondent is Domain Names Inc. (“Respondent”), Israel. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <nmc.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 electronically October 6, 2009; the National Arbitration Forum received a hard copy of the Complaint October 6, 2009. On October 7, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <nmc.com> domain name 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 October 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 4, 2009, 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@nmc.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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 <nmc.com> domain name is identical to Complainant’s NMC mark. 2. Respondent has no rights to or legitimate interests in the <nmc.com> domain name. 3. Respondent registered and used the <nmc.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Nebraska Machinery Company d/b/a NMC Group, is a dealer in agricultural equipment needs in the United States in the States of Nebraska and Iowa. Complainant has used the NMC mark continuously in commerce since at least as early as April 7, 2007, to promote its business and also registered the NMC mark with the United States Patent and Trademark Office (“USPTO”) April 1, 2008 (Reg. No. 3,406,151). Respondent, Domain Names Inc., registered the disputed domain name March 13, 1998. The disputed domain name does not resolve to an active website, but at one time resolved to a website that stated that it was under construction. 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." Given 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 The Panel finds that Complainant established sufficient rights in the NMC mark through registration of the mark with the USPTO (Reg. No. 3,406,151 issued April 1, 2008, filed December 22, 2006) pursuant to Policy ¶ 4(a)(i), and that these rights date back to the date of filing, December 22, 2006. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Complainant contends that Respondent’s <nmc.com> domain name is identical to its NMC mark. The <nmc.com> domain name differs from Complainant’s mark only in that the generic top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that the addition of the gTLD “.com” does not sufficiently distinguish a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i). See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that because the changes to the NMC mark do not make the disputed domain name sufficiently distinguished from Complainant’s mark, Respondent’s disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). Rights to or Legitimate Interests Complainant contends that Respondent lacks rights and legitimate interests in the <nmc.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of producing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent failed to submit a Response. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); 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”). Complainant contends that Respondent is not commonly known by the <nmc.com> domain name and that he has never owned or held a license for use of the NMC mark. The WHOIS listing for the disputed domain name lists Respondent as “Domain Names Inc.,” and without a Response by Respondent, no evidence before the Panel suggest any rights contrary to Complainant’s contentions. Because no evidence suggests that Respondent has ever been known by any variant on the NMC mark, the Panel therefore finds that Respondent is not commonly known by the <nmc.com> domain name pursuant to Policy ¶ 4(c)(ii). See American W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Complainant contends that Respondent is not making active use of the <nmc.com> domain name, as the website that resolved from that domain name said that it is under construction, and now the disputed domain name does not resolve to an active website at all. This Panel finds, just as previous panels have found, that failure to make active use of a domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not using the <nmc.com> domain name for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent registered the disputed domain name in 1998, some nine years before Complainant admittedly began using the NMC mark in 2007 to promote its business. Therefore, the Panel finds it was impossible for Respondent to have registered the <nmc.com> domain name in bad faith at that time because Respondent’s registration of the disputed domain name predates Complainant’s use of the mark. Thus, the Panel finds Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(iii). DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <nmc.com> domain name REMAIN with Respondent. Hon. Carolyn Marks Johnson, Panelist Dated: November 20, 2009. 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.