Warren Brugger c/o Excel4apps Pty Ltd v. Global Software, Inc.
Claim Number: FA0808001222538
Complainant is Warren Brugger c/o Excel4apps Pty Ltd (“Complainant”), represented by Warren
Brugger, of Excel4apps Pty Ltd,
REGISTRAR
The domain names at issue are <budgetwand.com> and <budgetwand.net>, registered with Network Solutions, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 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@budgetwand.com and postmaster@ budgetwand.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <budgetwand.com> and <budgetwand.net> domain names are identical to Complainant’s BUDGET WAND mark.
2. Respondent does not have any rights or legitimate interests in the <budgetwand.com> and <budgetwand.net> domain names.
3. Respondent registered and used the <budgetwand.com> and <budgetwand.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Warren Brugger
c/o Excel4apps Pty Ltd, is a business that produces commercial computer
software to assist businesses. On
Respondent, Global Software,
Inc., registered the <budgetwand.com> and <budgetwand.net> domain names on
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 does not evidence a registered trademark with
any governmental authority for the BUDGET WAND mark. However, registration of a mark is not
required under Policy ¶ 4(a)(i) if Complainant can
demonstrate that the mark has acquired secondary meaning through use in
commerce. See Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant asserts
common law rights in the BUDGET WAND mark based on its promotion of the BUDGET WAND computer software on its website and at
various trade shows around the
Respondent’s <budgetwand.com> and <budgetwand.net>
domain names contain Complainant’s BUDGET WAND mark in its entirety, without
the space, and add the generic top-level domains (“gTLDs”) “.com” and
“.net.” The Panel finds these changes to
be insignificant under the Policy since they are considered limitations on all
domain names. Therefore, the Panel
concludes that Respondent’s <budgetwand.com> and <budgetwand.net>
domain names are identical to Complainant’s BUDGET WAND mark pursuant to Policy
¶ 4(a)(i). See Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Under the Policy, Complainant has the initial burden of demonstrating that Respondent lacks rights and legitimate interests in the <budgetwand.com> and <budgetwand.net> domain names pursuant to Policy ¶ 4(a)(ii). Once Complainant establishes its prima facie case, the burden of proof shifts to Respondent to prove that it does have rights or legitimate interests in the <budgetwand.com> and <budgetwand.net> domain names. 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).
In this case, Complainant did not make any contentions in
its Complaint with respect to the <budgetwand.net>
domain name nor its use. Therefore, the
Panel finds that Complainant has failed to establish a prima facie case with respect to this domain name, and has
therefore failed to satisfy Policy ¶ 4(a)(ii) with
respect to this domain name. See VeriSign Inc. v. VeneSign
Based upon the allegations in the Complaint, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <budgetwand.com> domain name. Thus, the burden of proof shifts to Respondent. Even though Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the <budgetwand.com> domain name pursuant to Policy ¶ 4(c).
The WHOIS information identifies Respondent as “Global
Software, Inc.,” and the Panel can find no evidence in the record indicating
that Respondent may be commonly known by the <budgetwand.com> domain name. Therefore, the Panel concludes that
Respondent lacks rights and legitimate interests in the <budgetwand.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17,
2006) (concluding that the respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record,
including the WHOIS information, suggesting that the respondent was commonly
known by the disputed domain name); see also
Complainant has established that Respondent is using the <budgetwand.com> domain name to redirect
Internet users to Respondent’s website resolving from the <glbsoft.com>
domain name, where Respondent offers its competing computer products for
sale. Respondent is therefore attempting
to profit from the unauthorized use of Complainant’s BUDGET WAND mark in the <budgetwand.com>
domain name, and such use constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Carey
Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005)
(holding that the respondent’s use of disputed domain names to market competing
limousine services was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), as the respondent was
appropriating the complainant’s CAREY mark in order to profit from the mark); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
Based
on the analysis above, the Panel finds that Policy ¶ 4(a)(ii) has been
satisfied with respect to the <budgetwand.com> domain name, but
has not been satisfied with respect to the <budgetwand.net>
domain name.
Because Complainant has failed to satisfy Policy ¶ 4(a)(ii) with respect to the <budgetwand.net> domain name, the Panel in its discretion declines to analyze Policy ¶ 4(a)(iii) with respect to the <budgetwand.net> domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
With respect to the <budgetwand.com> domain name, the Panel finds that Respondent is attempting to disrupt Complainant’s business by diverting Internet users to Respondent’s competing commercial website. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Customers are likely to be confused as to the source,
sponsorship, affiliation, or endorsement of Respondent’s competing website
resolving from the <budgetwand.com> domain name. Respondent has created this likelihood of
confusion for its own commercial gain, which evidences bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007)
(finding that the respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because
the respondent was commercially gaining from the likelihood of confusion
between the complainant’s AIM mark and the competing instant messaging products
and services advertised on the respondent’s website that resolved from the
disputed domain name); see
also Asbury Auto. Group, Inc. v.
Finally, Respondent registered the <budgetwand.com> domain name approximately a week and a half after Complainant began advertising its new BUDGET WAND product on its website. The timing of the domain name registration indicates to the Panel that Respondent must have known about Complainant’s product at the time it registered the <budgetwand.com> domain name. The Panel concludes that this opportunistic registration of the <budgetwand.com> domain name indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that Respondent has to refute and which he has failed to do. The Panel finds a negative inference from this.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied with respect to the <budgetwand.com> domain name.
Having established all three elements required under the ICANN Policy with respect to the <budgetwand.com> domain name, the Panel concludes that relief shall be GRANTED with respect to this domain name. Accordingly, it is Ordered that the <budgetwand.com> domain name be TRANSFERRED from Respondent to Complainant.
Having failed to establish all three elements required under the ICANN Policy with respect to the <budgetwand.net> domain name, the Panel concludes that relief shall be DENIED without prejudice with respect to this domain name. Therefore, it is also Ordered that the <budgetwand.net> domain name REMAIN with Respondent.
Bruce E. Meyerson, Panelist
Dated: October 28, 2008
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