Softlayer Technologies, Inc.
Claim Number: FA0811001232120
Complainant is Softlayer Technologies, Inc., (“Complainant”) represented by Suzy Fulton, of Softlayer
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <softlayer.us>, registered with Key-Systems Gmbh.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 3, 2008; the Forum received a hard copy of the Complaint on November 3, 2008.
On November 5, 2008, Key-Systems Gmbh confirmed by e-mail to the Forum that the <softlayer.us> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 November 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 2, 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 usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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.
1. Respondent’s <softlayer.us> domain name is identical to Complainant’s SOFTLAYER mark.
2. Respondent does not have any rights or legitimate interests in the <softlayer.us> domain name.
3. Respondent registered and used the <softlayer.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Softlayer Technologies, Inc., is an application service provider that offers web hosting services and other related services. Complainant has used its service mark SOFTLAYER in connection with these services since June 2005, and has begun the process of filing for trademark registration for the SOFTLAYER mark with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <softlayer.net>, <softlayer.org> and <softlayer.mobi> domain names.
Respondent registered the <softlayer.us> domain name on February 5, 2008. The disputed domain name resolves to a website that directly competes with Complainant’s services.
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(f), 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 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
In order to demonstrate rights in a mark
under Policy ¶ 4(a)(i), it is not necessary for
Complainant to have a registered trademark.
Rather, Complainant may demonstrate common law rights with the requisite
secondary meaning. See
Complainant has alleged use of its mark since June 2005. Complainant has submitted evidence of its website for its business, and claims to be in the process of submitting a trademark application with the USPTO for the SOFTLAYER mark. Complainant also claims to own and operate the <softlayer.net>, <softlayer.org> and <softlayer.mobi> domain names. Typically, evidence for common law rights is generally submitted through the showing of a mark’s usage in commerce predating the registration of the disputed domain name. Nonetheless, the Panel finds that Complainant has met its burden of demonstrating rights in its mark, and the Panel therefore finds that Complainant has sufficient common law rights in the mark under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Respondent’s disputed <softlayer.us> domain name contains Complainant’s entire SOFTLAYER mark, and adds the country-code top-level domain “.us.” The Panel finds that such an addition is irrelevant under Policy ¶ 4(a)(i). See Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. 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), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <softlayer.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The WHOIS information lists
Respondent as “
Respondent is using the disputed domain name to resolve to a commercial website that offers services in direct competition with Complainant. Thus, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration or Use in Bad Faith
Respondent’s disputed domain name resolves to a website belonging to Complainant’s direct competitor. The Panel finds that Respondent primarily intended to disrupt Complainant’s business, presumably for the benefit of Respondent’s business. Therefore, the Panel finds that Respondent engaged in bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See 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 UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Moreover, the commercial use of Respondent’s identical disputed domain name indicates that Respondent intended to created a likelihood of confusion as to Complainant’s endorsement or affiliation of the disputed domain name and resolving website, presumably for commercial gain. Therefore, the Panel finds that Respondent engaged in bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). SeeTM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <softlayer.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 19, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page