SAS Institute Inc. v. Farzad Bahreini
Claim Number: FA0207000115038
Complainant is SAS Institute Inc., Cary, NC (“Complainant”) represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC. Respondent is Farzad Bahreini, Silver Springs, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasinstitute.us>, registered with Register.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 8, 2002; the Forum received a hard copy of the Complaint on July 11, 2002.
On July 10, 2002, Register.com confirmed by e-mail to the Forum that the domain name <sasinstitute.us> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”).
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 August 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 <sasinstitute.us> domain name is identical to Complainant's SAS INSTITUTE 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 has used the SAS INSTITUTE mark since 1976 to identify its computer software-related products and services, as well as computer training manuals. Complainant registered its mark with the United States Patent and Trademark Office as Registration Number 1,263,595 on January 10, 1984. Complainant is the largest privately-owned software company in the world and serves more than 38,000 business, government and university sites in 119 countries. Complainant’s SAS INSTITUTE mark is recognized worldwide as being associated with software solutions, software consulting services and software performance support. Complainant advertises its services at its website located at <sas.com>.
Respondent registered the disputed domain name <sasinstitute.us> on April 25, 2002. Respondent has posted a website at the domain name soliciting offers to buy the domain name with a minimum bid listed as $200.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the SAS INSTITUTE mark through continuous use and registration with the United States Patent and Trademark Office. Respondent’s <sasinstitute.us> domain name is identical to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the top-level country code “.us.” The addition of a top-level country code such as “.us” does not create a distinct mark capable of overcoming a claim of identical or confusing similarity. See Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also 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).
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, in light of Complainant’s unrebutted assertion that Respondent has no rights or legitimate interests in the disputed domain name, the Panel may presume that no such rights or interests exist. 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, because Respondent failed to submit a Response, the Panel may accept all of Complainant’s reasonable assertions as true. 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”).
There is no evidence on record, and Respondent has not come forward with any proof that it owns any trademark or service marks for SAS INSTITUTE. Therefore, Respondent has not established that it has rights or legitimate interests in <sasinstitute.us> pursuant to Policy ¶ 4(c)(i). See CDW Computer Ctrs., Inc. v. Joy Co. FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name).
Based on the fact that Respondent immediately began advertising that the <sasinstitute.us> domain name was for sale after its registration, it can be inferred that Respondent registered the domain name primarily to sell it for profit. This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), nor is it considered to be a legitimate noncommercial fair use of the domain name pursuant to Policy ¶ 4(c)(iv). 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); 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 the Respondent registered the domain name with the intention of selling it).
Respondent is known to the Panel as Farzad Bahreini, and there is no evidence that Respondent is commonly known as SASINSTITUTE or <sasinstitute.us>. Therefore, Respondent has not established that it has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s behavior indicates that it registered <sasinstitute.us> primarily for sale, rent or transfer because it immediately created a website advertising the domain name for sale after its registration. The registration of a domain name primarily for the purpose of sale, rent or transfer is evidence of bad faith registration and use 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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).
By virtue of Complainant’s United States trademark registration for its SAS INSTITUTE mark and its longstanding use in the computer software field, it can be inferred that Respondent had constructive knowledge of Complainant’s rights in the SAS INSTITUTE mark when it registered <sasinstitute.us>. Registration of an infringing domain name with knowledge of Complainant’s rights in the mark is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). 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 usTLD Dispute Resolution Policy, the Panel concludes that the requested relief shall be hereby Granted.
Accordingly, it is Ordered that the <sasinstitute.us> domain name be Transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 26, 2002.
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