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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nady Systems, Inc. v. Registrant [1075807]: St Kitts Registry / Moniker Privacy Services

Case No. D2007-1401

1. The Parties

The Complainant is Nady Systems, California, United States of America, represented by Frederic D. Schrag, United States of America.

The Respondent is Registrant [1075807] St Kitts Registry / Moniker Privacy Services, St Kitts., Olam, St Kitts and Nevis; and/or Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nadywireless.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2007, against Moniker Privacy Services. On September 24, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 5, 2007, after a number of reminders Moniker Online Services, LLC, transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2007 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on October 10, 2007. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2007.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 26, 2007. 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.

4. Factual Background

The Complainant is a manufacturer of audio and video equipment. The Complainant has been using the trademark NADY in connection with wireless microphone systems since 1976. The Complainant’s founder and CEO, John Nady, is considered a pioneer in the field of wireless hi-fidelity microphone systems. The Complainant markets and sells its NADY branded products in dozens of countries around the world.

The Complainant owns United States trademark registration (No. 2,531,147) for the trademark NADY, which was issued on January 22, 2002. The Complainant also owns domain name registrations for <nady.com> and <nadypro.com>.

The Complainant registered the domain name <nadywireless.com> in 1995 and held it until early 2007. The Complainant used the <nadywireless.com> domain name to direct internet users to Complainant’s website at “www.nady.com”. Many of Complainant’s advertisers and contacts in the music industry still use the domain name <nadywireless.com> to refer to the Complainant’s website “www.nady.com”. Through an inadvertent error, the Complainant was not notified of the renewal deadline and the domain name <nadywireless.com> expired.

Immediately after expiration, the Respondent acquired the domain name <nadywireless.com>. At the date the Complaint was filed, the Respondent was operating a “click-through” site that advertises the names of the Complainant’s competitors and their products.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain name <nadywireless.com> is confusingly similar to the Complainant’s registered trademark NADY.

The Complainant submits that the trademark NADY is highly distinctive of the Complainant’s business. The mark is derived from the surname of the Complainant’s founder, John Nady. The domain name in question encompasses the Complainant’s trademark NADY in its entirety as the dominant first element. The Complainant further submits that the second element “wireless” represents a generic or descriptive word and refers only to the products which the Complainant manufactures and markets. The addition of a descriptive word does not diminish the likelihood of confusion.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent is not commonly known by the disputed domain name. The Complainant’s rights in the trademark NADY clearly pre-date the registration of the domain name by the Respondent. The Complainant submits that the Respondent was not authorized to use the Complainant’s trademark and is not affiliated, or licensed to use the NADY trademark by the Complainant. The Complainant further contends that the Respondent is not using the domain name in a manner which offers bona fide goods and/or services. The Respondent is using a confusingly similar domain name to operate a website that intentionally diverts internet users to websites and/or products of Complainant’s competitors. Furthermore, the Complainant submits that the Respondent is using the domain name <nadywireless.com> which is confusingly similar to its registered trademark for the purposes of monetary gain through a “click-through” scheme, which does not constitute a bona fide offering of goods and/or services.

(c) Registered and Used in Bad Faith

The Complainant contends that the domain name <nadywireless.com> has been registered and is being used in bad faith based on the following factors: (i) Respondent’s knowledge of the Complainant’s use of the NADY trademark at the time of registration of the disputed domain name; (ii) Respondent’s registration of a confusingly similar domain name; and (iii) Respondent’s use of a confusingly similar domain name in connection with the operation of a website that provide links to competitors of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the NADY trademark, by virtue of United States Registration No. 2,531,147, which was attached to the Complaint.

The Panel finds that the domain name <nadywireless.com> is confusingly similar to the Complainant’s registered trademark NADY.

The domain name <nadywireless.com> contains as a first and dominant element the Complainant’s trademark NADY. The second element “wireless” is considered to be a generic and descriptive word for the type of products that the Complainant actually manufactures, sells and promotes. The addition of a descriptive word does not serve to distinguish a domain name from a registered trademark (see Wrangler Apparel Corp. v. Spiral Matrix, et al., WIPO Case No. D2007-0536; MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050; and MasterCard International Incorporated v. Organization Contact/www.wwwdomains4sale.com, WIPO Case No. D2007-0691).

The Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the domain name in dispute. The Respondent is not commonly known by the trademark NADY and was never authorized or licensed by the Complainant to use the trademark.

After acquiring the disputed domain name <nadywireless.com>, the Respondent has not used the domain name in connection with a bona fide offering of goods and services. The Respondent is using the domain name in connection with the operation of a “click-through” site offering links and products to competitors of the Complainant. The use of a confusingly similar trademark in connection with the operation of a “click-through” site does not constitute bona fide offering of goods and services. (see The Orange Bowl Committee, Inc. v. Front and Center Tickets, et al, WIPO Case No. D2004-0947; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain names. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The uncontested evidence shows that the Complainant’s trademark NADY is distinctive and well-known in the United States and internationally. The Panel is therefore prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the domain name <nadywireless.com>.

The evidence also shows that the Respondent registered the domain name after the Complainant inadvertently neglected to renew the domain name. The Panel accepts the Complainant’s submission that it fully intended to maintain the domain name, as it recently used the domain name <nadywireless.com> to direct internet users to its principal website “www.nady.com”. The Complainant has submitted compelling evidence that the non-renewal of the domain name <nadywireless.com> was an error, of which the Respondent has taken advantage for its own commercial purposes.

The Respondent has used the disputed domain name in connection with a click-through website that provide links to Complainant’s competitors and their products. The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s trademark and the Respondent did not file any response contesting this claim. The Panel is prepared to find that the Respondent has deliberately traded on the goodwill of the Complainant, by attracting internet users and diverting internet traffic intended for the Complainant’s site to the Respondent website for the purpose of monetary gain. Prior Panels have recognized this type of conduct as evidence of bad faith (see MasterCard International Incorporated v. ZJ, WIPO Case No. D2007-0687 and MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050).

For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <nadywireless.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: December 4, 2007