DECISION

Ferrostaal Incorporated v. DT and Domain Admin

Claim Number:  FA0408000309949

PARTIES

Complainant is Ferrostaal Incorporated (“Complainant”), represented by William P. Glenn Jr., of Royston, Rayzor,Vickery & Williams, L.L.P., 2102 Mechanic Street, Suite 205, Galveston, TX 77550.  Respondent is DT and Domain Admin  (“Respondent”), P.O. Box 24211, Manhattan, NY 10024.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ferrostaalusa.com>, registered with Enom, 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 (the "Forum") electronically on August 6, 2004; the Forum received a hard copy of the Complaint on August 6, 2004.

On August 11, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <ferrostaalusa.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 18, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 7, 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@ferrostaalusa.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 Forum transmitted to the parties a Notification of Respondent Default.

On September 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <ferrostaalusa.com> domain name is identical to Complainant’s FERROSTAAL USA mark.

2. Respondent does not have any rights or legitimate interests in the <ferrostaalusa.com> domain name.

3. Respondent registered and used the <ferrostaalusa.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is engaged in the business of steel trading and the purchase and sale of other goods and services, including oil and gas exploration equipment, technological equipment packages, shipment construction and components, and industrial contracting services.  Complainant has used the FERROSTAAL USA mark in commerce since January 1995 to market its products and services.  In 2003, Complainant had consolidated sales of approximately $473,000,000 and sold approximately 1.1 million tons of steel products in the U.S. and Canada.  Furthermore, Complainant spent over $187,000 in advertising and promotion of its products and services that are associated with the FERROSTAAL and FERROSTAAL USA marks and spent over $2,028,000 in general sales promotional activities. 

           

Respondent registered the <ferrostaalusa.com> domain name on February 17, 2004.  Prior to this date, Complainant held the registration for the domain name but inadvertently failed to renew its registration.  The domain name resolves to an adult-oriented website.  In response to Complainant’s cease and desist letter, Respondent’s agent responded with a demand of payment in the amount of $400 for the domain name registration. 

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 common law rights in the FERROSTAAL USA mark through its use of the mark in commerce since January 1995.  Moreover, Complainant’s use of the <ferrostaalusa.com> domain name prior to Respondent’s registration is further evidence of Complainant’s common law rights.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established; see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982.

Respondent’s <ferrostaalusa.com> domain name is identical to Complainant’s FERROSTAAL USA mark because the domain name fully incorporates the mark and merely omits the space between the two words of the mark and adds the generic top-level domain “.com.”  The mere omission of a space and addition of “.com” are insufficient to distinguish the <ferrostaalusa.com> domain name from Complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”; see also 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to contest the allegations of the Complaint; therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the <ferrostaalusa.com> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also 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.

Moreover, due to Respondent’s failure to contest Complainant’s assertions, the Panel may accept all reasonable assertions and inferences in the Complaint as true.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Complainant asserts that the <ferrostaalusa.com> domain name resolves to an adult-oriented website.  Use of a domain name identical to another’s mark in order to divert Internet users to an adult-oriented website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name; see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use.

In addition, Complainant asserts that Respondent, via its agent, attempted to sell the domain name registration to Complainant for more that Respondent’s out-of-pocket costs.  Respondent’s willingness to dispose of the domain name registration is evidence that Respondent lacks rights and legitimate interests in the domain name.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name.

Furthermore, nothing in the record establishes that Respondent is commonly known by the <ferrostaalusa.com> domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question.

Moreover, Respondent registered the <ferrostaalusa.com> domain name after Complainant failed to renew its registration of the domain name.  Respondent’s opportunistic registration of the domain name combined with its offer to sell the registration is evidence that Respondent lacks rights and legitimate interests.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name; see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent used a domain name identical to Complainant’s mark to divert Internet users to an adult-oriented website, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name; see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith.

Furthermore, Respondent attempted to sell a domain name identical to Complainant’s mark for more than Respondent’s out-of-pocket costs, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith; see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs.

Moreover, Respondent registered the <ferrostaalusa.com> domain name after Complainant inadvertently allowed its registration of the domain name to expire.  Previous panels have found that conduct such as Respondent’s is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary; see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <ferrostaalusa.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  September 21, 2004

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