Boardroom Software, Inc. v. Chieh Huang
Claim Number: FA0802001152049
Complainant is Boardroom Software, Inc. (“Complainant”), represented by George
R. Schultz, of Schultz & Associates, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <equityenterprise.com>, registered with Answerable.com (I) Pvt. Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 18, 2008.
On February 19, 2008, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <equityenterprise.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that the Respondent is the current registrant of the name. Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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 February 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 20, 2008 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 March 18, 2008.
An Additional Submission was received from Complainant on March 24, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on March 25, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7.
On March 27, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns two relevant trademarks: a word mark comprised of the phrase EQUITY ENTERPRISE, registered on the Supplemental Register of the U.S. Patent & Trademark Office since 2005 (registration number 2,999,376); and a design plus words mark comprised of the phrase EQUITY ENTERPRISE with a horizontal line in the middle and surrounded by an oval broken into two parts, registered on the Principal Register of the U.S. PTO since 2006 (registration number 3,151,733). In both instances the claimed date of first use of the mark is April 2003, and the marks are both registered for “software for the maintenance and management of corporate stocks and equity accounting.” Complainant asserts that the disputed domain name, <equityenterprise.com>, is identical or confusingly similar to these registered marks.
Complainant further alleges that Respondent lacks any rights or legitimate interests in the disputed domain name. In support thereof, Complainant asserts that it has not authorized Respondent’s use of its marks or the disputed domain name; that the disputed domain name does not offer for sale any goods or services, but rather is parked with a third-party service, iModo, which has established a website that generates advertising revenue on a pay-per-click basis; that such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use; and that Respondent is not commonly known by the domain name.
Finally, Complainant contends that the disputed domain name was
registered and is being used in bad faith.
In support of its bad faith claim, Complainant alleges, inter alia, that Respondent offered to
sell the domain name to Complainant for $13,500 to $16,000, amounts far
exceeding its out-of-pocket costs; that Respondent registered the domain name
primarily for the purpose of disrupting Complainant’s business; that Respondent
has intentionally sought to profit by attracting Internet users to his website
by creating a likelihood of confusion with Complainant’s marks; and that Respondent
attempted to conceal his identity by registering the domain name in other
names, including that of a proxy registration service. Complainant further asserts that the IP
server for the disputed domain name was formerly located at Softlayer
Technologies, Inc., in
Respondent contends that Complainant lacks exclusive rights in the phrase EQUITY ENTERPRISE, claiming that to the contrary it is a generic or descriptive term used extensively by third parties. Respondent notes that Complainant’s word mark is registered only on the Supplemental Register, and that its design plus words mark disclaims any exclusive rights to the phrase EQUITY ENTERPRISE. Respondent also denies that the disputed domain name is confusingly similar to the marks, on the ground that Respondent’s use of the domain name is unrelated to the goods and services for which Complainant uses its marks.
Respondent claims rights or legitimate interests in the disputed domain name based upon his use of the domain name for an informational website on the subject of “Equitization,” and denies that the domain name is merely parked, instead characterizing the website as a “fully customizable ‘content rich news site’” created with the assistance of iModo.
Finally, Respondent denies that the disputed domain name was registered
or is being used in bad faith. He claims
that he had never heard of Complainant’s marks prior to the present
Complaint. He states that he registers
and develops domain names incorporating generic and descriptive terms,
including the domain name that is the subject of this proceeding. Respondent provides printouts of other
similar websites he has developed: <antiquesvietnam.com>,
<vietnammortgages.com>, <danangresorts.com>, <energymeridians.com>,
<hotelsaffiliate.com>, <jatrophanut.com>, <multitouchtablets.com>,
<physicnutplant.com>, <textmessagingmarketing.com>, <truebarbecue.com>,
<uhddisplays.com>, <variableannuitycompanies.com>, <variableannuitylife.com>,
<variablerateannuities.com>, <variablerateannuity.com>, and <lifeassurancepolicies.com>. Respondent concedes that he offered to sell
the domain name to Complainant, but submits that the parties’ communications
regarding a possible sale were initiated by Complainant. Respondent acknowledges changing the
registration data for the domain name but states that the change was merely intended
to facilitate a possible sale of the domain name. Respondent characterizes Complainant’s
assertion of bad faith based upon the proximity of Softlayer Technologies and Complainant’s
offices as “far-fetched.” He states that
he resides in
C. Additional Submissions
Complainant submitted a timely Additional Submission in which it reiterated its original arguments and replied to various points made in the Response. The Panel has reviewed Complainant’s Additional Submission and notes that Complainant has failed to identify any exceptional circumstances warranting consideration of additional material, such as newly discovered evidence not reasonably available at the time of its original submission or a need to respond to arguments made by the opposing party that Complainant could not reasonably have anticipated. See, e.g., Am. Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006). Nor are any such exceptional circumstances apparent to the Panel from its own review of the submission. The Panel therefore declines to consider the substance of Complainant’s Additional Submission. Respondent’s Additional Submission similarly fails to identify grounds for its consideration, and accordingly the Panel declines to consider it for the same reason.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed 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.
The predominant element of Complainant’s registered design plus words mark is clearly the phrase EQUITY ENTERPRISE. The fact that Complainant was required to disclaim exclusive rights to that phrase standing alone is immaterial here because the Policy requires merely that Complainant have rights in the mark, not that such rights be exclusive. The disputed domain name is comprised of the phrase that represents the predominant element of Complainant’s mark, with the generic top-level domain suffix “.com” appended thereto. The Panel concludes on this basis that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and the burden therefore shifts to Respondent to rebut this showing with evidence of his rights or legitimate interests. See, e.g., Am. Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006). Respondent’s protestations notwithstanding, the Panel views Respondent’s use of the domain name for what appears to be an automatically generated website consisting of pay-per-click links to be merely perfunctory (if not pretextual), and it appears to the Panel more likely than not that Respondent’s selection of the domain name for this use was motivated primarily by its correspondence to Complainant’s mark. The Panel therefore concludes that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Complainant’s key allegation in regard to bad faith registration and use is that Respondent has intentionally sought to profit by attracting Internet users to his website by creating a likelihood of confusion with Complainant’s marks. Respondent denies having had any knowledge of Complainant’s marks until the present proceeding, and claims to have “hand registered” the domain name in 2007 because it incorporates a generic or descriptive term and not because of any similarity to Complainant’s mark. Respondent supports that claim by providing examples of other websites he has developed.
In the view of the Panel, under the present circumstances it appears more likely that Respondent selected the domain name because of Complainant’s mark than that he did so because of any generic or descriptive sense of the corresponding term. The Panel is skeptical that the term “equity enterprise” is commonly used, standing alone, as any sort of generic or descriptive term; to the contrary, nearly all of the examples offered by Respondent either represent its use as a component of a longer phrase (e.g., “private equity enterprise”) or as a component of a business entity name. Furthermore, the predominant use of the term (by far) appears to be as Complainant’s trademark.
For the foregoing reasons, the Panel concludes that Complainant has sustained its burden of proving that the disputed domain 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 <equityenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 8, 2008
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