Moldflow Corporation v. Robert Swanland
Claim Number: FA0204000109026
Complainant is Moldflow Corporation, Wayland, MA (“Complainant”) represented by Roland H. Schwillinski, of Goodwin Procter LLP. Respondent is Robert Swanland, Riverside, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com>, registered with Network Solutions, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 1, 2002; the Forum received a hard copy of the Complaint on April 4, 2002.
On April 4, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 25, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and 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 May 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
The <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> domain names are identical or confusingly similar to Complainant's PLASTICSZONE mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
No Response was received.
Complainant is the world’s leading provider of software products and services for optimizing the design, analysis and manufacture of injection molded plastic products. Major manufacturers throughout the world use Complainant’s products to address design issues and maximize productivity during the manufacturing process. Complainant registered the PLASTICSZONE mark with the United States Patent and Trademark Office as Registration Number 2,497,789 on October 16, 2001. Complainant has used the PLASTICSZONE mark in commerce since May 2000 in relation to its <plasticszones.com> website. Complainant registered its domain name on December 31, 1999. Complainant uses the website to promote sales of its product and services. The website allows the user to register for Complainant’s training courses, access consulting services, and analyze plastic part design using Complainant’s software. Complainant has invested over $80,000 advertising and promoting its PLASTICSZONE mark. Complainant’s website has over 5,400 registered users and receives an average of 95,000 hits from another 2,500 users every month.
Respondent registered the disputed domain names on November 29, 2001, October 4, 2001, and May 24, 1999. Respondent offered to transfer <plasticzone.com> to Complainant for a sum in excess of its out-of-pocket expenses in July of 2000, claiming that it had invested thousands of dollars creating an identity under the name PLASTICZONE. Respondent claimed that it was planning to start a design and engineering consulting website at the domain name for the plastics industry. Respondent however, has not developed a website at <plasticzone.com> even though it has held the domain name since May 1999. Respondent proceeded to register the other three infringing domain names after its communications with Complainant regarding <plasticzone.com> in the fall of 2001 with full knowledge of Complainant’s rights in the PLASTICSZONE mark.
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 has established that it has rights in the PLASTICSZONE mark through registration and continuous use. Furthermore, Respondent’s <plasticszone.info> domain name is identical to Complainant’s PLASTICSZONE mark because it incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain “.info.” The addition of a generic top-level domain name is irrelevant when determining whether a domain name is identical. 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.’”).
Respondent’s <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> are confusingly similar to Complainant’s mark because they incorporate the entirety of Complainant’s mark and merely omit the “s” from “plastics.” The omission of a single letter from another’s mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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 names. 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’s domain names are confusingly similar to Complainant’s and therefore will confuse the Internet user as to the source, sponsorship, and affiliation of Respondent’s website. Complainant has provided evidence that Respondent planned to start a business similar to Complainant’s and use the domain names for websites related to that business. It has been established that the use of a confusingly similar domain name with the intent to provide services that compete with Complainant’s services is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i); nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also 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).
There is no evidence on record that Respondent is commonly known by <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, or <plasticzone.com>, and therefore Respondent has no rights or legitimate interests in the disputed domain names 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has attempted to sell the <plasticzone.com> domain name for hundreds of thousands of dollars. This is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).
Furthermore, Respondent’s registration of numerous domain names that are confusingly similar and identical to Complainant’s mark is a pattern of conduct that is evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Respondent registered three of the disputed domain names after offering <plasticzone.com> for sale to Complainant. Therefore, Respondent had actual notice of Complainant’s rights in the PLASTICSZONE mark and its registration of confusingly similar domain names despite this fact is evidence of bad faith. See 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"); see also 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).
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 names <plasticszone.info>, <plasticzone.info>, <plasticzone.biz>, and <plasticzone.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 13, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page