Hexbugsnano.com

The timeline behind hexbugsnano.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 Innovation First, Inc. v. G Domains / Director Galib Gahramanov Claim Number: FA1208001458045 PARTIES Complainant is Innovation First, Inc. (“Complainant”), represented by Christopher J. Bischoff of Bischoff & Associates, Ltd., Illinois, USA. Respondent is G Domains c/o Director Galib Gahramanov (“Respondent”), Arizona, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <hexbugsnano.com>, registered with KEY-SYSTEMS GMBH. 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 August 14, 2012; the National Arbitration Forum received payment August 14, 2012. On August 16, 2012, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <hexbugsnano.com> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. KEY-SYSTEMS GMBH verified that Respondent is bound by the KEY-SYSTEMS GMBH registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On August 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2012, 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@hexbugsnano.com. Also on August 20, 2012, 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. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On September 18, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 I. Complainant makes the following allegations in this proceeding: a. Complainant owns rights in the HEXBUG and NANO marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) as follows: i. HEXBUG (Reg. No. 3,499,757 registered September 9, 2008) and ii. NANO (Reg. No. 3,992,344 registered July 12, 2011). b. Complainant uses its marks in connection with robotic toys. c. Respondent registered the <hexbugsnano.com> domain name September 27, 2011. d. Respondent’s <hexbugsnano.com> domain name is confusingly similar to Complainant’s HEXBUG and NANO marks. e. Respondent is not commonly known by the <hexbugsnano.com> domain name because the WHOIS information lists “G Domains / Director Glalib Gahramanov” as the registrant and Complainant did not authorize Respondent to use Complainant’s marks. f. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial use because Respondent uses the <hexbugsnano.com> domain name to resolve to a website that offers unrelated hyperlinks, from which Respondent commercially gains. g. Respondent registered and uses the <hexbugsnano.com> domain name in bad faith by attempting to create a likelihood of confusion by using Complainant’s mark in the disputed domain name to attract Internet users to Respondent’s website for commercial gain. II. Respondent did not submit a Response. FINDINGS The disputed domain name is confusingly similar to marks in which Complainant has shown legal rights. Respondent has not been shown to have rights to or legitimate interests in the disputed domain name. Respondent registered and used the disputed 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 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 to or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. 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.”). Identical to and/or Confusingly Similar Complainant alleges that it owns rights in the HEXBUG and NANO marks through its registration of the marks with the USPTO: HEXBUG (Reg. No. 3,499,757 registered September 9, 2008) and NANO (Reg. No. 3,992,344, registered July 12, 2011) Complainant sets out that it uses its marks in connection with robotic toys. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO. Thus, the Panel finds that Complainant owns rights in the HEXBUG and NANO marks for the purpose of Policy ¶ 4(a)(i) based on Complainant’s USPTO trademark registrations. Complainant argues that Respondent’s <hexbugsnano.com> domain name is confusingly similar to Complainant’s HEXBUG and NANO marks. The Panel notes that the disputed domain name contains both marks, the letter “s,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the combination of a complainant’s marks, accompanied by the letter “s” and a gTLD, fails to adequately distinguish a disputed domain name from the marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Consequently, the Panel finds that Respondent’s <hexbugsnano.com> domain name is confusingly similar to Complainant’s HEXBUG and NANO marks pursuant to Policy ¶ 4(a)(i). Respondent makes no contentions relative to Policy ¶ 4(a)(i). The Panel finds that the disputed domain name is confusingly similar to marks in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). Rights to 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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant contends that Respondent is not commonly known by the <hexbugsnano.com> domain name. Complainant claims that the WHOIS information lists “G Domains / Director Glalib Gahramanov” as the registrant, which Complainant argues indicates that Respondent is not known by the disputed domain name. Complainant further alleges that Complainant did not authorize Respondent to use Complainant’s HEXBUG and NANO marks. The Panel notes that Respondent did not present any affirmative evidence and did not refute any of Complainant’s arguments because Respondent did not respond to this case. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. The Panel agrees and finds that the evidence in the record indicates that Respondent is not commonly known by the <hexbugsnano.com> domain name according to Policy ¶ 4(c)(ii). Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial use of the <hexbugsnano.com> domain name. Complainant asserts that Respondent uses the <hexbugsnano.com> domain name to resolve to a website that offers unrelated hyperlinks. Complainant provides the Panel with a screenshot of the resolving website, which the Panel notes contains hyperlinks entitled “Bugs and Insects,” “Nano Coating,” “Nano Technology,” etc. Complainant alleges that Respondent commercially gains from the unrelated hyperlinks. The Panel finds that Respondent’s offering of unrelated hyperlinks at the website resolving from the confusingly similar domain name is proof that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <hexbugsnano.com> domain name. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Respondent makes no contentions relative to Policy ¶ 4(a)(ii). The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). Registration and Use in Bad Faith: Finally, Complainant urges that Respondent registered and uses the <hexbugsnano.com> domain name in bad faith. Complainant contends that Respondent attempts to create a likelihood of confusion by using Complainant’s HEXBUG and NANO marks in the disputed domain name to attract Internet users to Respondent’s website for commercial gain. Complainant alleges that Respondent’s website creates confusion as to Complainant’s sponsorship of, affiliation with, and endorsement of the disputed domain name. Complainant argues that Respondent commercially benefits from the commercial, unrelated hyperlinks. In T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panel held that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv). The Panel agrees and accordingly finds that Respondent’s registration and use of the <hexbugsnano.com> domain name was, and is, in bad faith under Policy ¶ 4(b)(iv). Respondent makes no contentions relative to Policy ¶ 4(a)(iii). The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that the relief shall be GRANTED. Accordingly, it is Ordered that the <hexbugsnano.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: September 25, 2012. Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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