Software ONE, Inc. v. Don Castonguay
Claim Number: FA0201000103811
PARTIES
Complainant
is Software ONE, Inc., New Berlin,
WI (“Complainant”) represented by Brian
G. Gilpin, of Godfrey & Kahn
S.C. Respondent is Don Castonguay, Tempe, AZ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <software1.net>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 9, 2002; the Forum received a hard copy of the
Complaint on January 11, 2002.
On
January 10, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <software1.net> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
January 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 31, 2002 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@software1.net 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
February 14, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson 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
allegations in this proceeding:
The
disputed domain name <software1.net> is identical or confusingly
similar to Complainant’s registered SOFTWARE ONE mark. Respondent has no rights or legitimate interests
in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant registered the SOFTWARE ONE
service mark on the Principal Register of the United States Patent and
Trademark Office as Registration No. 1,959,479 on March 5, 1996, and has
continuously used the mark in commerce since December 1985, in association with
its mail-order sale of software.
Complainant currently uses the domain names <software-one.com>,
<software-one.biz>, <softwareone.com>, <softwareone.org>,
<softwareone.biz>, <software1.com>, <software1.biz>, and
<softwareone.ws> in association with its software sales on the Internet.
Respondent registered the disputed domain
name on June 12, 2001 and has used it to sell software products in competition
with Complainant.
On December 13, 2001, Microsoft
Corporation, a sophisticated participant in the software industry, issued
Complainant a cease-and-desist letter, apparently mistaking Complainant as
being affiliated with Respondent’s website, which was used to sell alleged
counterfeit Microsoft software.
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 the 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 the 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.
Complainant has established its rights in
the SOFTWARE ONE mark through registration with the U.S. Patent and Trademark
Office and continuous subsequent use.
The disputed domain name is phonetically the same as Complainant’s mark,
and thus, is confusingly similar to it.
See VeriSign Inc. v.
VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and the
Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); see also YAHOO!
Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain
name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).
The addition of “.net” to the mark is
inconsequential to the “confusingly similar” inquiry, as the use of a generic
top-level domain name such as “.net” or “.com” is required in domain
names. See 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); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to
Complainant’s MYSTIC LAKE trademark and service mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant has established its rights to
and interests in its mark. Because
Respondent has not submitted a Response in this proceeding, the Panel may
presume it has no such rights or interests in the disputed domain name. See 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).
By infringing upon Complainant’s
registered mark in order to sell competing goods, Respondent is not making 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 Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
Complainant's site to a competing website); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests
where Respondent diverted Complainant’s customers to his websites).
Additionally, no evidence here suggests
that Respondent is commonly known as “software1” or “software1.net” pursuant to
Policy ¶ 4(c)(ii); Respondent is known to this Panel only as Dan
Castonguay. See Gallup Inc. v. Amish Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23,
2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain name, and
thus, that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain
name, which is confusingly similar to Complainant’s mark, in order to sell
goods in competition with Complainant.
Given the prominence of Complainant’s mark on the Internet, Respondent
was aware or should have been aware of Complainant’s rights in the mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain
name).
Respondent’s intentional use of a domain
name that infringes upon Complainant’s rights in order to attract Internet
users to its own website for commercial gain demonstrates bad faith pursuant to
Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that Respondent intentionally attempted to attract Internet users to
his website for commercial gain by creating a likelihood of confusion with the
Complainant’s mark and offering the same chat services via his website as the
Complainant).
The fact that actual Internet users,
including a sophisticated software company, were confused by Respondent’s use
of the domain name as to the source of Respondent’s website further supports a
finding of bad faith under Policy ¶ 4(b)(iv).
See Exxon Corp. v. Texas Motor Exch. of Houston, 628 F.2d 500,
506 (5th Cir. 1980) (“The best evidence of likelihood of confusion is provided
by evidence of actual confusion”); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used
Fanuc parts and robots on website <fanuc.com> because customers visiting
the site were confused as to the relationship between the Respondent and
Complainant).
Further, given that Complainant and
Respondent are competitors in the software distribution industry, it is
reasonable to infer that Respondent registered the disputed domain name in
order to disrupt Complainant’s business.
This demonstrates bad faith under Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent likely registered the contested domain
name with the intent to disrupt Complainant’s business and create user
confusion); see also General Media
Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of the Complainant registered and used a
domain name confusingly similar to the Complainant’s PENTHOUSE mark to host a
pornographic web site).
Accordingly, 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 the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <software1.net> domain name be transferred
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: February 28, 2002.
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