Ab Initio Software
Corporation v. Neela Patel
Claim Number: FA0711001105679
PARTIES
Complainant is Ab Initio Software Corporation (“Complainant”), represented by Lisa
M. Martens, of Fish & Richardson P.C., 12390 El Camino
Real,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abinitiosupport.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
Joel M. Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 31, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 2, 2007.
On November 1, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <abinitiosupport.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 November 8, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 28, 2007 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@abinitiosupport.com by
e-mail.
A timely Response was received and determined to be complete on November 28, 2007.
Complainant filed an Additional Submission on December 3, 2007.
On December 3, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
The Panel notes that Respondent has requested an
in-person hearing. There are no extraordinary circumstances in this matter which
could justify such a hearing, and the request is therefore denied. See Mary’s Futons, Inc. v.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant first asserts that it has rights in the name ABINITIO,
having acquired three trademarks in the AB INITIO name, and that Respondent’s
domain name is identical to, or confusingly similar to Complainant’s mark. Complainant notes that the name <abinitiosupport.com>
wholly incorporates Complainant’s mark, and the term “support” adds confusion,
because Complainant provides support to its customers, and Internet users might
think the website was established by, and managed by Complainant as a service
to its customers. Complainant next
asserts that Respondent has no rights or legitimate interests in the domain
name. Complainant points out that
Respondent has never been known by that name, is not making a bona fide offering of goods or services
through the name, and is not making a legitimate noncommercial use of the name.
Rather, Complainant asserts that
Respondent is using Complainant’s mark to draw Internet users who may be
interested in Complainant’s data warehousing products to Respondent’s site,
where Respondent features its own competing data warehousing company, known as
Ivertix. Finally, Complainant contends
that Respondent registered the name and continues to use the name in bad faith.
Complainant notes that Respondent was
well aware of Complainant’s product when it registered its domain name; indeed
it is hoping to gain customers who are aware of Complainant’s products and may
be seeking support. Complainant notes
that the disclaimer on the website is too little too late in terms of avoiding
confusion.
B. Respondent
Respondent does not address the issue of whether its domain name is
identical to or confusingly similar to Complainant’s mark. Respondent contends that it is engaged in a legitimate,
noncommercial use of the mark, because it is offering free support for users of
Complainant’s products. Because it is
offering such free support to Internet users of Complainant’s products,
Respondent contends that it has not acted in bad faith, either by registering
or continuing to use the name.
C. Additional Submissions
Complainant’s additional submission generally repeats the points made
in the initial Complaint, and reproduces the full text of a great number of
cases in support of its position. The Panel notes that the filing of a
submission of more than one hundred pages is not appropriate. Complainant easily could have provided the
citations to the Panel and to the Respondent instead of reproducing the cases,
and submitting such a huge document.
FINDINGS
The Panel finds that:
a.
the
domain name is identical to, or confusingly similar to Complainant’s mark;
b.
Respondent
has no rights or legitimate interests in the domain name; and
c.
the domain name
was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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;
(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.
There can be no doubt that the domain name <abinitiosupport.com>
is confusingly similar to the ABINITIO mark. It is confusing because it suggests to Internet
users that it is an authorized website at which Complainant provides support to
its customers. Moreover, the name wholly
incorporates the mark, adding only the generic term “support.” See
Sutton Group Fin. Servs. Ltd v. Rodger, D2000-0126 (WIPO June 27, 2005). The Panel notes that Respondent does not
contest this issue. Thus, the Panel
concludes that Complainant has demonstrated that the name is identical to or
confusingly similar to its mark.
Respondent contends that it is using the
domain name for noncommercial purposes, namely to provide support for Internet
users of Complainant’s product. However,
a brief visit to Respondent’s website reveals that the domain name is being
used to offer Respondent’s competing products to these Internet users, through
its Ivertix company.
The website contains this statement: “We are an IT organization named
Ivertix Inc who focuses on providing Data Warehousing / BI solutions along with other IT
needs of the client.” Since Complainant
is in the business of data warehousing, it is clear that Respondent is using
the name to compete with Complainant by attracting Complainant’s customers. As stated by the Panel in Ritchie Bros. Auctioneers (
It cannot be doubted that Respondent
registered and is using the name with full knowledge of Complainant’s mark. Indeed, Respondent claims that the very
purpose of the website is to offer free support for users of Complainant’s
products. As many panels have held,
registration of a domain name confusingly similar to an existing mark, with
full knowledge of the mark, is evidence of registration in bad faith. See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”). See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO April 24, 2002). In addition to Respondent’s knowledge of
Complainant’s mark at the time of registration, Respondent is using the name to
divert business from Complainant to its company, Ivertix. This is clear evidence of bad faith. See Am.
Online, Inc., v. Fu, D2000-1374 (WIPO Dec. 11, 2000). See also
Six Continents Hotels, Inc. v. Kruzicevic, D2002-0674 (WIPO Sept. 10, 2002)
(“…Respondent’s use of the Domain Name clearly demonstrates an intentional
attempt to attract, for commercial gain, Internet users to a website by
creating a likelihood of confusion with the Complainant’s mark as to the
source, affiliation or endorsement of the registrant’s website. According to
Paragraph 4(b)(iv) of the Policy, that in itself
constitutes evidence of bad faith registration and bad faith use.”). Finally, it is noted that following the filing
of the Complaint, Respondent has put prominent disclaimers on its website,
noting that it is not affiliated with Complainant. These disclaimers do not change the
fundamental fact that Respondent registered the domain name with knowledge of
Complainant’s mark, and is using the name to attract customers for its Ivertix
business, which competes with Complainant. See Google Inc. v. Miller, FA 1067791 (Nat. Arb. Forum Sept.
6, 2007); see also Ciccone v. Parisi, D2000-0847
(WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is
insufficient to avoid a finding of bad faith. First, the disclaimer may be
ignored or misunderstood by Internet users. Second, a disclaimer does nothing
to dispel initial interest confusion that is inevitable from Respondent’s
actions. Such confusion is a basis for finding a violation of Complainant’s
rights.”). For all of the foregoing
reasons, the Panel finds that the name was registered and is being used in bad
faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abinitiosupport.com> domain name be TRANSFERRED
from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: December 17, 2007
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