Ab Initio Software Corporation v. Neela Patel
Claim Number: FA0711001105679
Complainant is Ab Initio Software Corporation (“Complainant”), represented by Lisa
M. Martens, of Fish & Richardson P.C., 12390 El Camino
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abinitiosupport.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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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