SPB Software House v. Pluto Domain Services Private Limited
Claim Number: FA0901001245355
Complainant is SPB Software House (“Complainant”), represented by Brian
A. Hall, of Traverse Legal, PLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spbsoftware.com>, registered with Lead Networks Domains Pvt. Ltd.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of March 2,
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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <spbsoftware.com> domain name is confusingly similar to Complainant’s SPB mark.
2. Respondent does not have any rights or legitimate interests in the <spbsoftware.com> domain name.
3. Respondent registered and used the <spbsoftware.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SPB Software House, began in 1999 and has since
operated as an internationally-known software developer that creates products
for “smartphones” and Microsoft Windows Mobile devices. Complainant registered the SPB mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,210,244 issued
Respondent registered the disputed <spbsoftware.com> domain name on
Upon receipt of Complainant’s cease-and-desist letter, Respondent demanded that Complainant pay $1,500 for transfer of the domain name or else it would attempt to stay any UDRP proceedings in an Indian court.
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.”).
(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.
The Panel finds that Complainant has demonstrated its rights
in the SPB mark under Policy ¶ 4(a)(i) through
registration of the mark with the USPTO, and that those rights date back to the
filing date of the application. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum
domain name differs from Complainant’s SPB mark in the following manners: (1)
the generic top-level domain “.com” has been added; and (2) the descriptive
term “software” has been added. The
Panel notes that the addition of a top-level domain name is not material to a
Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and
legitimate interests in the disputed
domain name. Complainant must successfully
assert a sufficient prima facie case
supporting its allegations before Respondent receives the burden of
demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its
burden, and therefore Respondent must demonstrate its rights or legitimate
interests under Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
There is no evidence in the record, including the WHOIS
information, to conclude that Respondent is commonly known by the disputed
domain name. Moreover, Complainant
contends that Respondent is not a licensee of Complainant, and that Respondent
is not authorized to register or use the disputed domain name or the SPB
mark. Therefore, the Panel finds that
Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a website that displays third-party advertisements and links, including those for Complainant’s direct competitors. The Panel presumes that Respondent seeks commercial pay-per-click referral fees from this activity. Therefore, the Panel finds that Respondent has not engaged in 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant asserts that Respondent requested $1,500 for transfer of the disputed domain name. Without any evidence by Respondent to indicate otherwise, the Panel finds that this request for transfer fees in excess of the registration costs demonstrates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s willingness to sell the disputed domain name to Complainant for an amount well in-excess of the registration costs demonstrates Respondent’s intent to obtain commercial gain through this potential sale, which evidences Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Respondent’s disputed domain name diverts Internet users
seeking Complainant to a website that promotes Complainant’s competitors via
advertisements. The Panel finds that
Respondent primarily intended to disrupt Complainant’s business for monetary
benefit, and therefore engaged in bad faith registration and use under Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
It is very likely that Internet users seeking Complainant could come across the disputed domain name. These Internet users would then be confounded by ending up at Respondent’s website, as it provides links for Complainant’s competitors. Respondent has therefore created a likelihood of confusion as to Complainant’s endorsement of the disputed domain name and corresponding website. The Panel finds Respondent to have engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Accordingly, it is Ordered that the <spbsoftware.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 20, 2009
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