NetApp, Inc. v. July Linett c/o Jolly Co.
Claim Number: FA0812001238829
Complainant is NetApp, Inc. (“Complainant”), represented by Sharon R. Smith, of Morgan, Lewis & Bockius LLP, One
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netapp.org>, registered with GoDaddy.com, Inc.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2008.
On December 23, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <netapp.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 December 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2009 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 January 16, 2009.
An Additional Submission was received from Complainant on January 21, 2009, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
On January 22, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant has submitted the following, here summarized, arguments.
The Complainant, NetApp, Inc. is a corporation publicly traded for over a decade. It is widely recognized as a leader in enterprise storage and the delivery of data and content on demand. It has at least since 1995 continuously and extensively used the NETAPP® mark and name on its products and services, including its data storage, management and security hardware and software, and related services. It has also been widely publicized over the years through advertising, sales and marketing. In the fiscal years of 2008 the Complainant spent more than $1 million promoting the trademarked products and services. Based on its extensive use of the mark, NetApp recently changed its corporate name from Network Appliance, Inc. to NetApp, Inc in order to merge the corporate name with the trademark used for a long time in the marketplace to identify its products and services.
The Complainant is also the holder of the following
NETAPP® Reg. No. 2,844,772 (incontestable), for goods and services in International Classes 9, 41 and 42;
NETAPP®, Reg. No. 2,088,731 for goods in International Class 9; and
NOW (NETAPP ON THE WEB)®, Reg. No 2,634,994 (incontestable) for goods and services in International Classes 9 and 42.
The Complainant holds registrations of NETAPP® in other countries and jurisdictions as well.
Furthermore the Complainant has won several awards, including such
recognition as Fortune Magazine's 100 Best Places to Work list and
In the fiscal year 2008 alone, the Complainant achieved $3.3 billion dollars in revenue related to its products and services. Tens of thousands of NETAPP® systems are installed worldwide and the Complainant offers its NETAPP® systems around the world. The Complainant also maintains an extensive authorized partnership network, which is comprised of enterprises that support, complement and/or contribute to NetApp's NETAPP® products and services.
In connection with its business, the Complainant has promoted and marketed its products and services with an extensive website appearing at the domain names <netapp.com>, which it has owned since 1992, and <netapp.net>. The Complainant also owns and uses the equivalent of its <netapp.com> domain name in certain foreign countries. All the Complainant’s web sites prominently feature the NETAPP® mark.
The Respondent's <netapp.org> domain name is identical and/or confusingly similar to the Complainant’s mark because the domain name incorporates the Complainant’s entire NETAPP® mark and merely adds the generic top-level domain ".org." Thus, the Complainant has satisfied Policy ¶ 4(a)(i).
The Complainant has never authorized July Linett or Jolly Co., the entities identified as the Registrant on the WHOIS record, to use its trademark. Jolly Co. has never been an authorized reseller or had any other type of affiliation or association with the Complainant or the Complainant's products or services. The website does however not refer to Jolly Co. at all but rather, the entity Zerowait. Zerowait has not been an authorized reseller of the Complainant’s products or services. On its web site, the Respondent displays the <netapp.org> domain name as a trademark. It also displays Complainant's logo when it frames NetApp's "Dave's Blog," and on advertising banners on the web site. (Dave's Blog) and ("Got NetApp Filers?" and use of NETAPP with phone number). Thus, Respondent is improperly profiting from its misdirection of customers to the <netapp.org> domain name. Further, the Complainant has long used <netapp.com> and netapp.net to promote and market its own products and services. As a result, the Respondent's use of <netapp.org> improperly suggests a relationship between the respective parties when that is not the case. Further, the website at the <netapp.org> domain name uses the Complainant's trademark in advertising on its site in a manner that is likely to cause confusion.
The Respondent is using the <netapp.org> domain name, which is confusingly similar to Complainant's trademark, to divert Internet users seeking the Complainant's computer-related products and services to the Respondent's own competitive website selling competitive products and services, as well as competitive products from third parties.
Such use of the disputed domain name for commercial gain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(ii).
The WHOIS Record for <netapp.org>, identifies the Registrant Name as "July Linett" and the Registrant Organization as "Jolly Co.” On their face, neither one is the owner or beneficiary of a trade or service mark that is identical to the domain name or is commonly known by the <netapp.org> domain name, but the only federally registered trademarks consisting or even including the NETAPP® mark are marks that the Complainant owns. Further, the website features Zerowait as the trade or business name which likewise has no apparent relationship to <netapp.org>. Thus, the Respondent lacks rights and legitimate interests in the disputed domain name pursuant to UDRP Policy ¶ 4(c)(ii).
Furthermore, Internet users that come across the Respondent's website likely will believe that the Complainant sponsors or is in some way affiliated with the Respondent notwithstanding the disclaimer in small print on the bottom of the text of Respondent's web page that uses Complainant's former corporate name. This could tarnish the Complainant’s marks and reputation since the products and services offered by the Respondent are not necessarily of the same quality as services and products offered directly by the Complainant.
As a former authorized reseller until 2001, Zerowait, the entity operating the website at the <netapp.org> domain name, cannot dispute that it had knowledge of the Complainant's rights in its NETAPP® marks at the time the Respondent registered the disputed domain name in 2005. Registering and using the disputed domain name despite knowledge of another's rights in the mark evidences bad faith under Policy. Moreover, Jolly Co. needed only to run a search of federally registered marks or a Google search to determine that it had no right to use the domain name for products and services that can only be characterized as competitive or directly related to those of the Complainant.
Furthermore, the Respondent is using the <netapp.org> domain name to intentionally attempt to attract and/or misdirect, for commercial gain, Internet users seeking Complainant's products and services to Respondent's competitive website without authorization, by creating a likelihood of confusion with the Complainant's NETAPP® mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or of a product or service on the Respondent's website. Compounding the likely confusion and capitalizing on the goodwill associated with the NETAPP® mark, the Respondent improperly frames the Complainant’s "Dave's Blog", a feature associated by the marketplace with the Complainant’s own website, and uses the logo and mark of the Complainant in a confusing manner on advertising on the <netapp.org> website. It is well-established that such type of conduct establishes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The framing of the Respondent of the Complainant’s copyrighted material and its logo on the website associated with <netapp.org>, even though the Complainant has not authorized the Respondent to use its NETAPP® mark to sell competitive products or services, constitutes evidence that the Respondent has registered the domain name primarily for the purpose of disrupting Complainant's business pursuant to Policy ¶ 4(b)(iii).
Finally, the WHOIS information provided for
the <netapp.org> domain name does not
appear to use a recognized company name, which is an indicia
of bad faith as well. Jolly Co. and July
Linett are identified as Registrant – but on the face of the website Jolly Co.
has no affiliation with the site. The site appears to be operated only by
Zerowait. Despite the Jolly Co. name, the Registrant e-mail is identified as email@example.com and the address and phone number provided appear to be that of Zerowait. Further,
the Complainant does not believe, based on its research, that Jolly Co. is an
active corporation qualified to do business in
The Respondent has submitted the following summarized arguments.
The Respondent does not dispute that the domain name <netapp.org> is identical to the trademark that is the basis of the instant Complaint. However, Respondent contends that the term "netapp" also has a dictionary definition, namely, it is an acronym for the phrase "network application" and also is defined as "a purpose built appliance that performs a specific limited function on a network.... In the generic definition, it is NOT an ASIC-based device, such as a router, but typically a rules-based, semi-intelligent device, often employing xml-based policies to look deeply into network traffic and apply those rules."
In response to Complainant's allegation that Respondent has no rights or legitimate interest in the <netapp.org> domain name, Respondent submits that (i) the term "netapp" has a dictionary definition that is relevant to the content on Respondent's web site and (ii) that the instant Complaint is barred by laches.
It is a general principle of trademark law that if a trademark has a descriptive connotation, the trademark owner must accept that third parties are free to use that term or phrase in its descriptive sense.
The term "netapp" has a dictionary definition, namely, it is an acronym for the phrase "network application.” The term also is used to describe a type of device, namely a: “rules-based, semi-intelligent device." These dictionary definitions are relevant to the content being provided at Respondent's website.
The <netapp.org> website is a blog site providing commentary, news, and information on data storage products as well as on business and economics issues relating to data storage. The content includes information on network applications. In view of the above, the Respondent contends that it is making a legitimate fair use of the domain name <netapp.org>.
In order for a trademark owner to preserve its rights, it is necessary for the trademark owner to police the use of other names that may be confusingly similar to the owner's trademark. The Respondent's website is a blog that has been operating since 2005. The <netapp.org> is a mirror of the blog that appears at < zerowait.blogspot.com> (hereinafter, the blogs at <netapp.org> and <zerowait.blogspot.com> are collectively referred to as "the Blog Sites.").
In addition to posting commentary, news, and information on data storage and network application products, the Blog Sites invite visitors to submit comments for potential posting to the site. On at least two occasions, Dave Hitz, the founder and Executive Vice President of the Complainant, has posted comments to the Blog Sites. Archives of past blog postings, including links to Mr. Hitz's prior comments, are maintained at <zerowait.blogspot.com> and < blogger.com>. Mr. Hitz's comments did not mention the <netapp.org> domain name in any capacity. In addition, neither Mr. Hitz nor any other representative of the Complainant has ever expressed concern over the registration and use of the <netapp.org> domain name by Respondent. Thus, for nearly three years, the Respondent has operated the <netapp.org> blog site under the assumption that the Complainant did not object to this use. Until receipt of the instant complaint, the Respondent was unaware of the Complainant's concerns regarding the <netapp.org> domain name.
The Respondent acknowledges that JollyCo is not the name of a legal entity. As explained more fully below, the reference to JollyCo in the domain name registration information was not meant to mislead or deceive, but rather to reference another domain name owned by the Respondent and held in the same domain name account. As such, the contact information is the same.
The Respondent's birth name was July Jolly. Ms. Linett is also the registrant of the domain name <Jollyco.com>, a domain name that plays on her maiden name.
The <Jollyco.com> domain name was registered in 1997, prior to the registration of <netapp.org>.When the Respondent registered <Jollyco.com>, she referenced "JollyCo" in the contact information, in addition to her legal name, as a means of identifying the domain name being registered, namely, <Jollyco.com>.
Further, the remaining contact information for the <netapp.org> domain name, namely the Respondent's name, address, telephone number and email address are all correct and a valid means for contacting the Respondent. The Respondent's reference to JollyCo was not a false representation nor was it intended to mislead or deceive.
Further, the Complainant argues that Zerowait Corporation, not July Linett, is the true user and operator of the <netapp.org> domain name but the Complainant's allegations are misleading. July Linett is Vice President of Zerowait Corporation and the address associated with the <netapp.org> domain name is Respondent's business address at Zerowait Corporation.
<Netapp.org> is a blog site, namely a web site providing commentary, news, and information on data storage products, network applications, and business and economics issues relating to the same. No products or services are sold or are available for sale at the actual site.
Respondent acknowledges that the site in question contains links to a commercial site, namely, the store at <thezerowaitstore.com>. A user who clicks on this links is transported to the Zerowait website, which is clearly marked at such.
The Respondent contends that its practice of linking its blog site to other sites, including commercial sites, is a common practice. As indicated above, users who click on these links are transported to a separate site that is clearly marked as such. In view of the different web addresses as well as the clear labeling on each of these pages, it is highly unlikely that consumers will believe the place of commercial activity, namely, <thezerowaitstore.com>, is associated with, affiliated with, or otherwise endorsed by the Complainant. Further, although the Respondent believes the form and content of its blog site was appropriate, since its receipt of the instant Complaint, the Respondent has made minor changes to the appearance and structure of its site in an effort to address some of the Complainant's concerns. For instance, the Respondent has removed some of the site navigation that appeared on <netapp.org>, in order to make it more difficult for visitors to get to the separately run Zerowait online store. At the present time, a user would have to follow the link to the blog archives, which are maintained at <zerowait.blogspot.com/>. From there, the user can access the Zerowait store. Thus, although confusion was unlikely prior to the instant Complaint, it is now even less likely that a user would believe that these links and the commercial activity occurring at <thezerowaitstore.com> are associated, affiliated with, or endorsed by the Complainant. Further, Respondent notes that the mere presence of a likelihood of confusion or dilution is insufficient to find bad faith under the Policy. The Respondent is not using this domain name to compete with the Complainant and its products and services, and has take great care to offer its products and services at a separate web site at <thezerowaitstore.com>.
C. Additional Submissions
The Respondent's argument that its use of netapp refers to "network applications" is to no avail. Respondent does not point to any use of the term NETAPP on its web site that uses the word NETAPP to refer to "network applications." There is no reference on the <netapp.org> site to NETAPP, except as a reference to the Complainant and its products and services. There are no such references, for example, on the excerpts of the site the Respondent provided as an example of how the site looked in January 2009 after the Respondent made changes to address the copyright infringement that Complainant evidences in its opening submission. There is not one reference to any use of NETAPP to mean supposedly "network applications" on the site as it looked when this Complaint was filed. This is not surprising since the Respondent at the site sells network hardware, not network applications.
The fact that the site must include a disclaimer stating that the site is not affiliated in any way with the Complainant underscores the confusion this site necessarily creates and that the relevant public associates the NETAPP mark exclusively with the Complainant. The disclaimer only serves to evidence that the relevant public identifies the mark NETAPP® exclusively with the Complainant and its products and services.
The Free Dictionary relied on by the Respondent cites no authority or support for NETAPP as meaning "network application" and there is no reference in the current or prior contents posted on the site <netapp.org> that make use of "netapp" to refer to its supposed other meaning "network applications." To the contrary, the Respondent only used the word "netapp" to refer to the Complainant or the domain name.
It is readily apparent that Respondent is not making any "fair use" of <netapp.org>, but is rather using the domain name, admittedly identical to NetApp's registered trademarks, in an attempt to commercially promote and sell through links products and services competitive with the Complainant. The fact that the current content posted on <netapp.org>, would require an Internet user to click through to links that eventually allow the purchase of Zerowait's used and refurbished NETAPP® products and related services does not render <netapp.org> non-commercial. Most importantly, the site repeatedly promotes the commercial products and services of Zerowait. It prominently states that "Zerowait is a 3rd party provider of Parts, Services and Support." This statement alone belies the alleged non-commercial purpose of the site.
The Respondent's argument that it has legitimate rights in <netapp.org> because the Complaint is barred by laches amounts to nothing more than a red herring. The only allegation that the Respondent makes is that one of the Complainant’s employees supposedly posted comments on the Zerowait blog, although even the Respondent admits that it is not certain whether the employee allegedly "submitted his comments through the netapp.org or zerowait.blogspot.com websites. Further, the Respondent fails to establish that during this period of so-called delay by the Complainant, that the Respondent did anything to develop legitimate rights in the netapp.org domain name.
The Respondent's changes to the website, including removing the unauthorized framing to a Complainant blog with the Complainant’s logo, which was clear copyright infringement, and making it "more difficult for visitors to get to the separately run Zerowait store" only serve to confirm the Respondent’s bad faith. Furthermore, it is well-established that use of disclaimer also fails to rebut evidence of bad faith.
It is undisputed that the Complainant's NETAPP® mark is federally registered and incontestable. As an incontestable trademark, it cannot be defeated based on the grounds of descriptiveness, even if such a claim was properly supported by evidence, which is not the case here.
FINDINGS AND DISCUSSION
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.
Rights in a trademark or service mark
The Complainant asserts rights in the NETAPP mark through the following registrations of the mark with the United States Patent and Trademark Office (“USPTO”):
NETAPP® Reg. No. 2,844,772 (incontestable);
NETAPP®, Reg. No. 2,088,731; and
NOW (NETAPP ON THE WEB)®, Reg. No 2,634,994 (incontestable).
Because both parties are resident in the
Previous Panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. See e.g. Janus Int’l Holding
It is the Respondent who has the burden of refuting this assumption. As the Respondent does not dispute that the <nettapp.org> domain name is identical to the Complainant’s registered trademark, the Panel finds the Complainant’s trademark registration sufficient to establish rights in the mark pursuant to the Policy ¶ 4(a)(i). The Panel need not for this purpose consider whether the NETAPP mark is well-known.
The disputed domain name contains the Complainant’s entire registered trademark. The added generic top-level domain “.org” does not function in a distinguishably manner as it is irrelevant when establishing whether a mark is identical or confusingly similar. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Regarding the Respondent’s claim that the disputed domain name is comprised of, in connection with the business in which the parties operate, a descriptive term and therefore cannot be found to be identical to the Complainant’s mark, the Panel simply notes that it has been established that the Complainant has rights in a trademark and that the Respondent does not dispute that the domain name is identical to the Complainant’s registered trademark. The argument that the term is generic must therefore fail under the Policy ¶ 4(a)(i). See e.g. Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under the Policy 4(a)(i)).
In conclusion, the Panel finds that the Complainant has succeeded in establishing the first element.
The Panel wishes to remind the parties that it is first for the Complainant to establish a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name for the burden of proof to shift to the Respondent, see 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).
The Complainant asserts that it has never authorized the Respondent or the company Zerowait, to which the disputed domain name leads, to use its trademark. The Complainant further contends that by using the Complainant’s logo and framing blogs from the Complainant’s website, as well as confusing consumers looking for the Complainant’s products on the Internet, the Respondent is using the website to promote its own competitive product. Finally, the Complainant contends that the Respondent is not commonly known by the <netapp.org> name or has any other apparent relationship to that mark/name. The Respondent does not contradict the absence of a license to use the trademark or that the Respondent is not commonly known as NETAPP.
By pointing out these facts, the Complainant has met its initial burden. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, supra; see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat’l Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000) (“[I]n the absence of any license or permission from the Complainant to use any of its Trademark or to apply for or use any Domain Name incorporating those Trademark, it is clear that no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by Respondent.”).
The Respondent’s claim that the term “netapp” is an established acronym for network application” has stronger bearing when assessing the element of rights or legitimate interests. However, the only evidence the Respondent has provided is an extract from the Free Dictionary Online where the acronym is also associated with the Complainant’s trademark and name. This is not sufficient to establish that NETAPP is a term commonly used. Furthermore, the contention of the Respondent that the use of the domain name is that of a blog site providing commentary news is contradicted by the fact that there is a need for a disclaimer on the website and that the resolving website contains a prominent hyperlink to a commercial website in direct competition with the Complainant’s business. This does not, as the Panel finds, constitute a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy 4(c)(iii).”). Consequently, this element has as well been established by the Complainant.
The Panel considers it established that the Respondent has registered a domain name identical to the mark of the Complainant and that it is diverting Internet users to a competitor’s website, namely Zerowait’s.
In light of the Panel’s findings that there is insufficient evidence to suggest that the domain name also is a term commonly used, and that the Respondent is the Vice President of a company which operates in the same field of business as the Complainant, it is reasonable to expect that the Respondent was aware of the trademarks of the Complainant. Under these circumstances there is a legal presumption of bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); 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 Respondent has not managed to overcome this presumption.
The Respondent has acknowledged that it has made minor changes to the appearance and structure of its site in an effort to address some of the Complainant's concerns. For instance, the Respondent has removed some of the site navigation that appeared on <netapp.org>, in order to make it more difficult for visitors to get to the separately run Zerowait online store. A disclaimer is as well used to disassociate the website with the Complainant.
The Panel finds that neither the changes made nor the disclaimer minimize the initial interest confusion brought upon the consumer. Therefore, the Respondent has nevertheless registered and is using the <netapp.org> domain name in bad faith pursuant to the Policy ¶ 4(a)(iii). See Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Complainant has in other words met its burden of proof and has established the third element.
The Doctrine of Laches
This conclusion reached above is not affected by the Complainant’s long delay in pursuing a complaint in relation to the disputed domain name. If the requirements of a valid complaint under the Policy are established, the Policy does not provide any defense of laches. Considering the Policy’s fundamental objective of providing an inexpensive and expeditious procedure for clear cases of domain name abuse, the defense of laches is, according to established consensus, not a defense available under the Policy. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defence of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”). In any case, there is nothing in the evidence that suggests that the Respondent in the time passed between registering the domain name and the initiating of these proceedings, has managed to build up a legitimate interest or use in good faith of the domain name. Furthermore, a respondent that considers that the bringing of the complaint was inequitable because of delay can submit the matter to a court of competent jurisdiction.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netapp.org> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: February 5, 2009
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