NetSuite Inc. v. Mohamad Abdul Sharooq Ahmed
Claim Number: FA2106001949550
Complainant is NetSuite Inc. (“Complainant”), represented by Amy J. Tindell of Holland & Hart LLP, Colorado, USA. Respondent is Mohamad Abdul Sharooq Ahmed (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nxtsuite.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2021; the Forum received payment on June 3, 2021.
On June 3, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nxtsuite.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 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2021 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@nxtsuite.com. Also on June 7, 2021, 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 July 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, NetSuite Inc., is a provider of cloud-based business management software.
Complainant has rights in the NETSUITE mark through its registration with the United States Patent and Trademark Office (“USPTO”) and other registries worldwide.
The listed registrant for the <nxtsuite.com> domain name is Mohamad Abdul Sharooq Ahmed, a Project Development Manager at Nxtsuite Technologies Private Ltd. (together, Mr. Ahmed and Nxtsuite Technologies Private Ltd. are “Respondent”).
Respondent’s <nxtsuite.com> domain name is confusingly similar to Complainant’s NETSUITE mark since it differs from the mark only by a single letter and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nxtsuite.com> domain name. Respondent’s use of the at-issue domain name to offer products in direct competition with Complainant is in violation of the referral partner agreement between Complainant and Respondent.
Respondent registered and uses the <nxtsuite.com> domain name in bad faith. Respondent gains a reputational advantage by using Complainant’s mark in violation of the referral partner agreement between Complainant and Respondent. Additionally, Respondent registered the at-issue domain name with actual knowledge of Complainant’s rights in the NETSUITE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NETSUITE trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the NETSUITE trademark.
Respondent uses the at-issue domain name to offer products in direct competition with those products offered by Complainant.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its NETSUITE trademark. Such registration, or any national registration, is sufficient to demonstrate Complainant’s rights in the NETSUITE mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <nxtsuite.com> domain name contains Complainant’s NETSUITE trademark with a letter “x” replacing the mark’s first letter “e.” The resulting misspelled string is then followed by a necessary top-level domain name, here “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <nxtsuite.com> domain name from the NETSUITE trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <nxtsuite.com> domain name is confusingly similar to Complainant’s NETSUITE trademark. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in a domain name and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Mohamad Abdul Sharooq Ahmed” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by the <nxtsuite.com> domain name except perhaps that Complainant indicates that together Mohamad Abdul Sharooq Ahmed and Nxtsuite Technologies Private Ltd. are “Respondent.” The mere mention of the at-issue trademark in a business name used by Respondent does not, without more, support a finding that Respondent is commonly know by such name. In light of the foregoing, the Panel concludes that Respondent is not commonly known by the <nxtsuite.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Respondent’s uses <nxtsuite.com> to address a webpage offering products in direct competition with those products offered by Complainant. The webpage displays/displayed logos similar to Complainant’s own logo. Moreover, Respondent was a referral partner of Complainant. Subject to the parties’ referral agreement Respondent was allowed to use Complainant’s mark in advertising but expressly prohibited from using the mark in business names, domain names, or trademarks incorporating “NET or “SUITE.” Respondent’s use of a confusingly similar version of Complainant’s trademark in the domain name violates the parties’ referral agreement. Respondent’s use of the domain name is thus neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also, Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the confusingly similar <nxtsuite.com> domain name to address a website offering goods that are in competition with Complainant’s offering. As mentioned above regarding rights and legitimate interests, Respondent violates the parties’ referral partner agreement and doing so allows Respondent to improperly gain a reputational advantage. Respondent’s use of the confusingly similar at-issue domain name to compete with Complainant or in violation of their agreement restricting Respondent’s use of Complainant’s trademark indicates bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Procter & Gamble Co. v. Hlad, FA 126656 (Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor); see also, HDR Global Trading Limited v. Kim Kwanho, FA2009001915393 (Forum Nov. 9, 2020) (“Registering a disputed domain name as an affiliate of a Complainant and in violation of the affiliate agreement may demonstrate bad faith under Policy ¶ 4(a)(iii)”).
Furthermore, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark or, as appears to be the case here, will read the misspelled trademark laden domain name and confuse it with its target trademark. As all can see, the at-issue domain name contains Complainant’s NETSUITE mark which Respondent overtly misspells by replacing the marks’ first “e” with an “x.” Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent had actual knowledge of Complainant’s rights in the NETSUITE mark when Respondent registered <nxtsuite.com> as a domain name. Respondent’s prior knowledge is evident from the fact that Complainant and Respondent were parties to a written agreement concerning, in part, Respondent’s use of Complainant’s NETSUITE mark prior to Respondent’s registration of the <nxtsuite.com> domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of the <nxtsuite.com> domain name under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nxtsuite.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 2, 2021
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