Cytecargentina.com

The timeline behind cytecargentina.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 Cytec Technology Corp. v. Marco Ferraina Claim Number: FA1306001505301 PARTIES Complainant is Cytec Technology Corp. (“Complainant”), represented by Paige Stradley, Minnesota, United States. Respondent is Marco Ferraina (“Respondent”), Arizona, United States. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <cytecargentina.com>, registered with GODADDY.COM, LLC. 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. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2013; the National Arbitration Forum received payment on June 18, 2013. On June 18, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <cytecargentina.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 June 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2013 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@cytecargentina.com. Also on June 19, 2013, 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 July 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" 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 A. Complainant A. Complainant’s makes the following contentions: Policy ¶ 4(a)(i) Complainant, Cytec Technology, Corp., is a specialty chemicals and materials company. It develops, manufactures, and sells products used in aerospace, adhesives, inks, mining, and plastics. Complainant has a global presence in the specialty chemicals market and has employees in 31 countries worldwide. See Complainant’s Exhibit G. Complainant owns rights in the following trademarks through registrations with the United States Patent and Trademark Office (“USPTO”): the CYTEC mark (e.g., Reg. No. 1,918,650, Registered September 12, 1995); the CYTEC ENGINEERED MATERIALS mark (e.g., Reg. No. 2,938,523, Registered April 5, 2005); and the CYTEC.COM mark (e.g., Reg. No. 2,201,768, Registered November 3, 1998). See Complainant’s Exhibit A. Complainant owns rights in the CYTEC mark through additional registrations of the mark in various other countries. See Complainant’s Exhibit B. Notably, Complainant owns rights in the CYTEC mark through its registration with the National Institute of Industrial Property (“NIIP”) of Argentina (e.g., Reg. No. 1,681,400, Registered August 18, 1998). See Complainant’s Exhibit C. Complainant is the owner of the domain name <www.cytec.com>. See Complainant’s Exhibit D. Respondent’s <cytecargentina.com> domain name is confusingly similar to Complainant’s CYTEC and CYTEC.COM marks because it fully incorporates the marks and merely adds the geographical term “argentina.” Policy ¶ 4(a)(ii) Respondent is not commonly known by the <cytecargentina.com> domain name and has no relationship with Complainant. Respondent’s use of the <cytecargentina.com> domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because Respondent has failed to make an active use of the disputed domain name. Instead, the <cytecargentina.com> domain name resolves to a website containing an error message. See Complainant’s Exhibit F. Policy ¶ 4(a)(iii) Respondent registered the disputed domain name in bad faith, because it had constructive knowledge of Complainant’s rights in the CYTEC mark. Respondent’s failure to make an active use of the disputed domain name since it registered the domain name on March 5, 2013 also demonstrates Respondent’s registration in bad faith under Policy ¶ 4(a)(iii). See Complainant’s Exhibit F (providing a screenshot of the error message resolving from the disputed domain name). B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1. Complainant has rights in its CYTEC mark. 2. Respondent’s <cytecargentina.com> domain name is confusingly similar to Complainant’s mark. 3. Respondent has no rights to or legitimate interests in the domain name. 4. Respondent registered and used the 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. 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. 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 and/or Confusingly Similar Complainant asserts that it owns rights in the following trademarks through registrations with the USPTO: the CYTEC mark (e.g., Reg. No. 1,918,650, Registered September 12, 1995); the CYTEC ENGINEERED MATERIALS mark (e.g., Reg. No. 2,938,523, Registered April 5, 2005); and the CYTEC.COM mark (e.g., Reg. No. 2,201,768, Registered November 3, 1998). See Complainant’s Exhibit A. Complainant further asserts that it owns rights in the CYTEC mark through registrations with other trademark authorities worldwide, including a registration with the NIIP of Argentina (e.g., Reg. No. 1,681,400, Registered August 18, 1998). See Complainant’s Exhibits B & C. The Panel notes that under Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). Similarly, the Panel notes that in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panel held that the complainant had established rights in its mark through registration of the mark with several trademark authorities around the world, including the USPTO. In accordance with these precedents, the Panel determines that Complainant has established sufficient rights in its CYTEC and CYTEC.COM marks pursuant to Policy ¶ 4(a)(i). Complainant alleges that Respondent’s <cytecargentina.com> domain name is confusingly similar to its CYTEC and CYTEC.COM marks, because the disputed domain name fully incorporates Complainant’s marks and merely adds the geographic term “argentina.” The Panel notes that previous panels have stated, “it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.” See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004). Similarly, in Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006), the panel held that the addition of the geographic term “brasil” to the complainant’s mark did not avoid confusing similarity under Policy ¶ 4(a)(i). In the instant case, the <cytecargentina.com> domain name similarly fully incorporates Complainant’s CYTEC.COM mark and merely adds the geographic term “argentina.” Accordingly, the Panel finds that Respondent’s <cytecargentina.com> domain name is confusingly similar to Complainant’s CYTEC.COM mark pursuant to Policy ¶ 4(a)(i). 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), and then the burden shifts to Respondent to show it does have 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 disputed <cytecargentina.com> domain name. The Panel notes that the WHOIS information identifies “Marco Ferraina” as the registrant, and Respondent has failed to submit evidence that it is commonly known as “cytecargentina.” Furthermore, Complainant argues that it has no relationship with Respondent and has not authorized or licensed Respondent’s use of the <cytecargentina.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the Panel concluded 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. In accordance with this precedent, the Panel finds that Respondent is not commonly known by the <cytecargentina.com> domain name, and thus does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). Complainant further alleges that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), because Respondent’s use of the <cytecargentina.com> domain name is an inactive holding. A screenshot provided by Complainant demonstrates that the <cytecargentina.com> domain name resolves to the following error message: “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” See Complainant’s Exhibit F. Complaint further argues that Respondent has submitted no evidence of its preparations to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that in Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel held that the respondent’s non-use of the disputed domain name demonstrated that the respondent was not using the disputed name 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). See also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely inactively held the domain name). Furthermore, in Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000), the panel found no rights or legitimate interests in the disputed domain name where there was no evidence that the respondent had made preparations to use the domain name in connection with a bona fide offering of goods or services. The Panel infers that Respondent has failed to make an active use of the disputed domain name and has not made preparations to use the domain name. The Panel holds that Respondent’s use of the <cytecargentina.com> domain name is not protected under Policy ¶¶ 4(c)(i) and (iii). Registration and Use in Bad Faith Complainant makes various allegations of bad faith pursuant to Policy ¶ 4(a)(iii) that do not fall under one of the four types of bad faith contemplated in Policy ¶ 4(b). The Panel notes that in undertaking a bad faith analysis pursuant to Policy ¶ 4(a)(iii), previous panels have emphasized the non-exclusivity of the Policy ¶ 4(b) factors as evidence of bad faith. See, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In accordance with these precedents, the Panel makes a finding of bad faith in the instant case even though Complainant does not allege bad faith in a form specifically contemplated by Policy ¶ 4(b). Finally, Complainant alleges that Respondent’s inactive holding of the disputed <cytecargentina.com> domain name evidences Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). Specifically, Complainant alleges that Respondent has failed to make any active use of the disputed domain name since it was registered roughly four months ago on March 5, 2013. The Panel considers the case of Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), in which a previous panel held that failure to make an active use of a domain name permits an inference of registration and use in bad faith. Similarly, in Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith. In the instant case, the alleged inactive holding has lasted for four months: longer than the period of inactivity in Am. Broad. Cos., supra. Thus, the Panel infers that Respondent’s inactive holding of the <cytecargentina.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii). Complainant argues that because its CYTEC and CYTEC.COM marks are fanciful marks, Respondent’s incorporation of these marks in the disputed domain name sufficiently evidences bad faith pursuant to Policy ¶ 4(a)(iii). Complainant alleges that its CYTEC and CYTEC.COM marks are fanciful insofar as Complainant itself coined the term “Cytec,” and the term has no meaning except to identify Complainant’s products and services. In Johnson & Johnson v. Rx USA, FA 157288 (Nat. Arb. Forum June 23, 2003), the panel concluded that the respondent’s unauthorized use of the complainant’s fanciful mark for commercial gain evidenced bad faith registration and use of a domain name. The Panel notes that unlike in Johnson & Johnson, supra, the disputed <cytecargentina.com> domain name resolves to an inactive website, and there is no evidence of Respondent’s commercial gain from the holding. However, the Panel also notes that “Fanciful marks are referred to as the ‘strongest’ of all marks, in that their novelty creates a substantial impact on the buyer's mind—if sufficiently advertised and recognized. Being a ‘strong’ mark has significance, in that the mark will then be given an expansive scope of judicial protection into different product or geographical markets and as to more variations of format.” See McCarthy on Trademarks and Unfair Competition, § 11:6 (4th ed. 2000). Because fanciful marks are thus given strong protection, the Panel finds that Respondent’s mere incorporation Complainant’s fanciful mark in the instant case sufficiently demonstrates bad faith pursuant to Policy ¶ 4(a)(iii), in spite of the fact that Respondent is only inactively holding the disputed domain name. Complainant further alleges that Respondent had actual and constructive knowledge of its CYTEC and CYTEC.COM marks, which tends to show the registration and use of the <cytecargentina.com> domain name was made in bad faith. Complainant alleges that Respondent’s actual and constructive knowledge can be inferred because Complainant’s CYTEC and CYTEC.COM marks are fanciful marks that have no meaning except to connote Complainant’s goods and services; they have been used by Complainant for over a decade; they are well-known worldwide; and they have been registered since 1995 and 1998, respectively. The Panel notes that a respondent’s constructive notice of a complainant’s ownership of a mark is insufficient to support a finding of bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). However, the Panel also considers that a respondent’s actual knowledge of a complainant’s ownership of a mark can be inferred by the facts, and that such an inference can support a finding of bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Moreover, the Panel notes that a previous panel has inferred a respondent’s actual knowledge of a complainant’s mark because of the fanciful nature of that mark. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (“Because of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent knew of Complainant's rights in the mark at registration.”) Accordingly, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the CYTEC and CYTEC.COM marks, and thus also infers that Respondent acted in bad faith under 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 <cytecargentina.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: July 29, 2013 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.