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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NeuStar, Inc. v. Kris Sweldo

Case No. D2006-1210

 

1. The Parties

The Complainant is NeuStar, Inc., of Sterling, Virginia, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.

The Respondent is Kris Sweldo, of Winnipeg, Manitoba, Canada.

 

2. The Domain Names and Registrar

The disputed domain names <neu-star.com> and <neustarmanufacturing.com> are registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2006. On September 21, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On September 21, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2006. The Response was filed with the Center on October 19, 2006.

The Center appointed Lawrence K Nodine as the sole panelist in this matter on November 28, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Respondent’s employer submitted a response one day late. Respondent subsequently certified (pursuant to a Panel Order requiring certification in accordance with the Rules) that this initial response was filed on his behalf. In the circumstances, the Panel exercises its discretion under paragraph 5(d) of the Rules to accept the late response.

Pursuant to paragraph 12 of the Rules, the Panel issued two Administrative Panel Orders directing Respondent to comply, if possible, with the applicable provisions of the Rules regarding certification. Respondent complied with these procedural Orders.

 

4. Factual Background

In November 1999 Complainant’s NeuStar corporation was formed to continue the business of CIS, a former independent operating unit of Lockheed Martin.

NeuStar, operating under the name and trademark NEUSTAR, took over responsibility as the Local Number Portability Administrator which operates the call and signaling/routing registry for North America. NeuStar processes over 3 million Number Portability Administration Center transactions each month, serving more than 450 wireless and wireline service providers. In 2001, NeuStar was selected by the U.S. Department of Commerce to be the exclusive operator of the .us country-code Internet domain name registry. In addition to the .us registry in the United States, NeuStar also is the exclusive operator of the .cn registry in China, the .tw registry in Taiwan, and serves as the registry operator for the new .travel top-level domain. In 2005, NeuStar became a publicly traded company, listed on the new York Stock Exchange, under the ticker symbol NSR.

Respondent is employed by Neu Star Manufacturing, which manufactures trailers and boxes in Winnipeg, Manitoba, Canada. The Domain Names at issue were registered on July 30, 2006.

 

5. Parties’ Contentions

A. Complainant

With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that:

It owns the following trademark registrations for the mark NEUSTAR:

Registration Nos. 2525756, 2697124, 3035697 and 3041558 in the United States;

Registration No. 579687 in Canada;

Registration No. 001487578 in the European Community;

Registration No. 208576 in Norway; and

Registration No. 494238 in Switzerland.

Complainant is the owner of the following domain names:

<neustar.com>, <neustar.net>, <neustar.org>, <neustar.cn>, <neustar.us> and <neustar.biz>.

The Domain Names contain elements identical to and confusingly similar to the Complainant’s NEUSTAR trademarks because the Domain Names contain the entire word NEUSTAR as the distinctive part or portion of each of the Domain Names and neither the term “manufacturing” in <neustarmanufacturing.com> nor the hyphen separating the word “neustar” in <neu-star.com> makes the Domain Names distinctive.

NeuStar has engaged in extensive use, marketing, and commercial promotion of the NEUSTAR Trademarks.

With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that:

Respondent is not (either as an individual, business or other organization) commonly known by the name “Neustar” or any variation thereof.

Respondent, Kris Swedlo, does not own any company or business name registrations containing “Neustar”.

Respondent is not related to Complainant, and has not received any license, permission, or consent to use or own the trademark NEUSTAR or any variations thereof.

Complainant’s established rights to the trademark NEUSTAR in connection with any services precede by at least 7 years the registration date of Respondent’s Domain Names containing “Neustar”.

“NEUSTAR” is a uniquely coined term and is a registered trademark right owned exclusively by NeuStar.

With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that:

Due to the existence of Complainant’s trademark registrations and the fame of the NeuStar services, Respondent has constructive, prior knowledge of NeuStar’s prior rights in the NEUSTAR trademarks.

Respondent’s registration of the Domain Names was done deliberately to attract the public and divert Internet traffic away from the official NeuStar websites, with the intent of causing public confusion, mistake and deception as to the source, origin and affiliation of <neu-star.com> and <neustarmanufacturing.com>.

The web pages associated with the Domain Name <neu-star.com> appear to provide search engine services pointing users to goods and services similar to and identical to those provided by NeuStar. Users accessing these pages will surely be confused as to the source of information and incorrectly assume NeuStar is associated with the Domain Name <neu-star.com>.

Likewise, the <neustarmanufacturing.com> domain name incorporates the entire NEUSTAR mark brand, capitalizing on the goodwill, reputation, notoriety, and fame of the NEUSTAR trademarks. There is no webpage associated with the <neustarmanufacturing.com> domain name, so consumers finding this domain name would likely assume that the domain name was being reserved by NeuStar or a licensed affiliate.

Complainant asserts that Respondent registered and acquired the Domain Names:

(a) primarily for the purpose of confusing the public, and/or for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Names;

(b) in order to prevent Complainant from reflecting the marks in a corresponding domain name;

(c) primarily for the purpose of disrupting the business of Complainant;

(d) to divert and attract, for commercial gain, Internet users to its Domain Names, URL, website or other on-line location, by creating a likelihood of confusion with the NEUSTAR trademarks as to the source, sponsorship, affiliation, association, or endorsement of Respondent’s Domain Names, URL, website or other on-line location.

B. Respondent

Tim Neufeld, President of Neu Star Manufacturing, responded to the Complaint on behalf of his employee, Kris Sweldo, the Respondent herein. Respondent certified and adopted Neufeld’s response.

With respect to Paragraph 4(a)(i) of the Policy, Respondent contends that:

The public will not be confused by a trailer manufacturing business with its location in Winnipeg, Manitoba, with the Complainant’s business. Respondent’s logo colors, format, and fonts are completely different from Complainant’s. Respondent’s clients are also completely different. Respondent is in the business of making trailers and boxes nothing even remotely related to Complainant’s products and services.

With respect to Paragraph 4(a)(ii) of the Policy, Respondent contends that:

Neu Star Manufacturing is a metal fabrication business registered as a legal corporation entity in Manitoba and Canada;

The name Neu Star Manufacturing comes from the last name of the President of Neu Star Manufacturing, Tim Neufeld, who states that his business has no association with Complainant’s company;

The allegation and complaint regarding bad faith towards Mr. Kris Swedlo holds no merit.

Respondent states in his response to Procedural Order No. 1 that:

He registered the Domain Names on behalf of Tim Neufeld, owner and operator of New Star Manufacturing;

Neu Star Manufacturing was incorporated as a business in Canada in August 2006;

A name search was performed before his business name, Neu Star Manufacturing was approved for use for the production of trailers and gravel boxes;

Neu Star Manufacturing is a legitimate business in Manitoba, Canada and that his Neu Star trailers and boxes have brand name recognition in the construction and oil industry;

The Domain Names were registered in order to direct Neu Star Manufacturing’s dealers to the website for product information and quotes;

The website was up with future development planned as of October 26, 2006; and

Its business does not conflict with the business of Complainant.

With respect to Paragraph 4(a)(iii) of the Policy, Respondent contends that:

Respondent, upon his employer’s instruction, was asked to register a domain name and work with website design consultants to build an internet site for the company’s suppliers and consumers. When he searched the domain registry, he was provided two alternatives to the name Neu Star and he registered two, one <neu-star.com> and the other <neustarmanufacturing.com>.

Respondent states that it had no prior knowledge of Complainant’s business or of its famous trademark.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Given the existence of the above-identified United States, Canadian and European trademark registrations for the mark NEUSTAR, and Complainant’s alleged 7 years use of the marks in connection with Complainant’s services, the Panel finds that Complainant has trademark rights in the NEUSTAR trademark.

The Panel also finds that <neu-star.com> is confusingly similar to Complainant’s NEUSTAR marks. “NEUSTAR” is the dominant portion of Complainant’s registered marks and of the disputed Domain Name <neu-star.com>. The Domain Name differs from Complainant’s registered NEUSTAR marks only in that it contains a hyphen and that it contains the non-descriptive gTLD domain name suffix “.com”. It is well established that neither punctuation marks such as hyphens nor the “.com” suffix on their own avoid a finding of confusing similarity. See Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903 (December 29, 2003) (“The addition of a hyphen and the top-level domain designation “.com” are not sufficient to avoid the conclusion that the domain name and mark are confusingly similar.”) See, e.g., Rolls Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 (February 19, 2001) (“[t]he use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is identical to a mark”); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (April 22, 2000) (“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”).

The Panel also finds that the domain name <neustarmanufacturing.com> is confusingly similar to Complainant’s NEUSTAR mark because the generic term “manufacturing”, is not sufficient to avoid confusion.

The Panel therefore finds that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Any of the following circumstances enumerated in paragraph 4(c) of the Policy may demonstrate Respondent’s rights or legitimate interests in the Domain Name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that, prior to notice of this dispute, Respondent’s employer began operating a bona fide manufacturing business under the name “Neu Star Manufacturing”. The Domain Names at issue were registered on July 30, 2006 and Neu Star Manufacturing was incorporated as a Canadian business in August 2006, both prior to any notice of the dispute.

Although Respondent, Kris Sweldo, does not own the Neu Star Manufacturing business, the Panel finds, based on Respondent’s certified statements, that he registered the Domain Names at the request of and as an agent of Tim Neufeld, the owner of Neu Star Manufacturing. Because on the basis of the available evidence the Respondent was acting as agent for Neu Star Manufacturing, whose use was apparently bona fide, the Panel finds that, before any notice of the dispute, Respondent was using or making demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.

The Panel therefore finds for the Respondent on the second element of the Policy.

C. Registered and Used in Bad Faith

Since the Respondent has properly demonstrated rights and legitimate interests in the Domain Names, under Policy, Paragraph 4(a)(ii) above, it is not necessary for a determination of registration and use in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Lawrence K Nodine
Sole Panelist

Dated: February 14, 2007