BEA Systems, Inc. v. Ahmed Bouras
Claim Number: FA0203000105951
Complainant is BEA Systems, Inc., San Jose, CA, USA (“Complainant”) represented by Ronit M. Alcheck, of Brobeck, Phleger & Harrison LLP. Respondent is Ahmed Bouras, Poissy, FRANCE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weblogic.info>, registered with Intercosmos Media Group d/b/a DirectNIC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 19, 2002; the Forum received a hard copy of the Complaint on March 21, 2002.
On March 20, 2002, Intercosmos Media Group d/b/a DirectNIC confirmed by e-mail to the Forum that the domain name <weblogic.info> is registered with Intercosmos Media Group d/b/a DirectNIC and that Respondent is the current registrant of the name. Intercosmos Media Group d/b/a DirectNIC has verified that Respondent is bound by the Intercosmos Media Group d/b/a DirectNIC 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 March 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 10, 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 email@example.com 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 April 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <weblogic.info> domain name is identical to Complainant's WEBLOGIC mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant registered the WEBLOGIC mark as United States Trademark Registration Number 2,159,633 on May 19, 1998. Complainant uses the mark in relation to computer software for programming and software development. Complainant also owns trademarks for WEBLOGIC in Canada, Japan, Korea and the European Union. Complainant has used the WEBLOGIC mark since 1996. Complainant promotes its products through 93 offices in 34 countries. Complainant has become one of the most trusted names in e-business technology, and its products have been used by more than 2,100 system integrators, independent software vendors, and application service providers.
Respondent registered the disputed domain name on October 8, 2001. Respondent has not developed a website at the disputed domain name. Complainant asserts that Respondent admitted that it had notice of Complainant’s rights in the disputed domain name and registered <weblogic.info> with the intention of selling it. Furthermore, Respondent advertised that the domain name was for sale immediately after registering it.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant, through registration and use, has established that it has rights in the WEBLOGIC mark. Furthermore, Respondent’s <weblogic.info> domain name is identical to Complainant’s WEBLOGIC mark because it incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain name “.info.” The addition of a generic top-level domain name to another’s mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has been satified.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate 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).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent registered a domain name confusingly similar to Complainant’s mark with the intention of selling it. The sale of a domain name is not considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling the domain name).
Furthermore, the record does not demonstrate, and Respondent has not come forward to show that it is commonly known by <weblogic.info>. Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Any use of the disputed domain name by the Respondent would create a likelihood of confusion as to the source, sponsorship, or affiliation of the website and therefore would not create rights or legitimate interests in <weblogic.info> pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
It can be inferred that Respondent registered the disputed domain name with the intention of selling it. This is considered to be evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).
Respondent admitted that it had notice of Complainant’s rights in the WEBLOGIC mark when it registered the infringing domain name. Therefore, Respondent has exhibited bad faith by registering and using a domain name identical to Complainant’s WEBLOGIC mark despite actual notice. 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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
It can be inferred that Respondent registered the disputed domain name in order to attract Complainant’s customers for Respondent’s commercial gain. This type of use is considered to be in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner… Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <weblogic.info> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 26, 2002
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