NetApp, Inc. v Osbil Technology / Osbil Technology Ltd.
Claim Number: FA2007001906918
Complainant is NetApp, Inc. (“Complainant”), represented by Sara K. Stadler of Kilpatrick Townsend & Stockton LLP, California, United States. Respondent is Osbil Technology / Osbil Technology Ltd. (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <netappdatafabric.com> and <netappturkiye.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Realtime Register B.V..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 31, 2020; the Forum received payment on July 31, 2020.
On August 4, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com and Realtime Register B.V. confirmed by e-mail to the Forum that the <netappdatafabric.com> and <netappturkiye.net> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Realtime Register B.V. and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com and Realtime Register B.V. has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com and Realtime Register B.V. 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 August 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2020 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@netappdatafabric.com, postmaster@netappturkiye.net. Also on August 7, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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" 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) NetApp, Inc., is a company offering hybrid cloud data services and data management. Complainant asserts rights in the NETAPP mark through registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,088,731, registered on August 19, 1997). The disputed domain names <netappdatafabric.com> and <netappturkiye.net> are confusingly similar to Complainant’s mark, as they incorporate the mark in its entirety, merely adding the terms “data fabric” or “turkiye” and the “.com” or “.net” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interest in the disputed domain names. Respondent is not commonly known by the domain names nor has Complainant authorized Respondent’s use of the NETAPP mark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services. Rather, Respondent uses the domain names to pass off as Complainant in order to sell Complainant’s goods.
iii) Respondent registered the disputed domain names in bad faith. Respondent uses the domain names to pass off as an authorized dealer of Complainant’s products. Respondent also registered the domain names with knowledge of Complainant’s rights in the NETAPP mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The Panel notes that the disputed domain names were registered on March 23, 2020.
2. Complainant has established rights in the NETAPP mark through registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,088,731, registered on August 19, 1997).
3. The dispute domain names’ resolving websites feature Complainant’s mark and Complainant’s products.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the NETAPP mark through its registration of the mark with multiple trademark agencies. Registration of a mark with multiple trademark agencies around the world is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 2,088,731, registered on August 19, 1997). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s mark because the disputed domain names incorporate the NETAPP mark in its entirety and merely add the terms “datafabric” or “turkiye” along with the “.com” or “.net” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds each of the disputed domain names is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent’s use of the NETAPP mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names shows that the registrant’s name is ”Osbil Technology / Osbil Technology Ltd.” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by either disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to pass off as Complainant. Use of a virtually identical website to pass off as a complainant and offer a complainant’s goods is not a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of the dispute domain names’ resolving websites which feature Complainant’s mark and Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues Respondent registered and uses the disputed domain names in bad faith. A respondent’s use of the domain names to pass off as a complainant is evidence of bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously noted, Complainant provides screenshots of the dispute domain names’ resolving websites which feature Complainant’s mark and Complainant’s products. The Panel finds that such use is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant further contends that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the NETAPP mark. Respondent’s prior knowledge can be established through a respondent’s use of the mark as well as the mark’s notoriety. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Respondent uses both Complainant’s mark and pictures of its products. The Panel infers, due to the notoriety of Complainant’s mark and Respondent’s manner of use of the disputed domain names that Respondent had prior knowledge of Complainant’s rights in the NETAPP mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netappdatafabric.com> and <netappturkiye.net> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 7, 2020
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