Science Applications International Corporation v. Glenn Summerfield
Claim Number: FA0807001218154
Complainant is Science Applications International Corporation (“Complainant”), represented by Douglas
A. Rettew, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <saic-usa.com>, registered with Melbourne IT Ltd trading as Internet Names Worldwide.
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 electronically on July 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2008.
On July 31, 2008, Melbourne IT Ltd trading as Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <saic-usa.com> domain name is registered with Melbourne IT Ltd trading as Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT Ltd trading as Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT Ltd trading as 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 August
5, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 25, 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 postmaster@saic-usa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <saic-usa.com> domain name is confusingly similar to Complainant’s SAIC mark.
2. Respondent does not have any rights or legitimate interests in the <saic-usa.com> domain name.
3. Respondent registered and used the <saic-usa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SAIC, is a Fortune 500 company that is one of the world’s leaders in scientific research, engineering, and technology, and has been recognized by Business Week and numerous other publications as such. Complainant holds multiple registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the SAIC mark, including Registration Number 1,440,254 issued August 7, 1984. Complainant also owns the registration for the <saic.com> domain name and maintains the resolving website.
Respondent, Glenn Summerfield, registered the <saic-usa.com> domain name on April 22, 2008. The website resolving from the disputed domain name displays a screen printout of Complainant’s website.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant’s USPTO trademark registrations adequately
confer rights in the SAIC mark pursuant to Policy ¶ 4(a)(i). See Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE
mark through registration with the U.S. Patent and Trademark Office
(‘USPTO’).”); see also Diners Club Int’l
Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring
rights in the DINERS mark to the complainant based upon its USPTO trademark
registration).
Respondent’s <saic-usa.com>
domain name contains Complainant’s SAIC mark in its entirety along with a
hyphen, the geographic identifier “
Based upon this analysis, the Panel concludes that Policy ¶
4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <saic-usa.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
According to Complainant, “Respondent is not and has not
been commonly known by the Domain Name.”
Based upon the evidence in the record, or lack thereof, the Panel finds
this to be true. The WHOIS information
is the only relevant evidence in this regard, and it identifies Respondent as
“Glenn Summerfield.” Consequently, the
Panel concludes that Respondent is not commonly known by the <saic-usa.com> domain name pursuant
to Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent’s <saic-usa.com> domain name resolves to a website with a screen printout of Complainant’s website. Essentially what this means is that Respondent has taken an electronic picture of Complainant’s website and placed that picture on its own website. Respondent’s intentions in doing so are not clear from the record, but it is apparent that Respondent is misappropriating Complainant’s goodwill. As a result, the Panel concludes that Respondent’s use of the <saic-usa.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WorldPay Ltd. v. Jones, FA 1169388 (Nat. Arb. Forum May 8, 2008) (finding that the respondent was not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the respondent used the disputed domain name to link to the complainant’s website); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
As mentioned above, Respondent is misappropriating the goodwill associated with Complainant’s business, and specifically the SAIC mark. Complainant alleges, and the Panel agrees, that this creates a likelihood of confusion as to the source of Respondent’s <saic-usa.com> domain name and corresponding website. The Panel presumes that Respondent is attempting to commercially benefit from this confusion. Consequently, the Panel determines that Respondent’s registration and use of the <saic-usa.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”).
The Panel finds this evidence sufficient to conclude that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saic-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 12, 2008
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