STMicroelectronics, Inc. v. BKARATO a/k/a AK BKARATO
Claim Number: FA0903001254574
Complainant is STMicroelectronics, Inc. (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sttechnologies.com>, registered with Business.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a global
semiconductor company with appoximately 50,000 employees.
Complainant has been using
the ST trademark since 1988 and holds over 100 trademark registrations for this
Mark in sixty jurisdictions around the world, including with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,356,498, issued
Respondent has no license from or agreement with Complainant
authorizing Respondent to use the ST mark.
Respondent registered the <sttechnologies.com>
domain name on
The disputed domain name resolves to a website displaying links to third-party websites unrelated to Complainant’s business.
On March 25, Respondent offered to sell the disputed domain name to Complainant for €7500 (approximately US$9,700).
Respondent’s <sttechnologies.com> domain name is confusingly similar to Complainant’s ST mark.
Respondent does not have any rights to or legitimate interests in the domain name <sttechnologies.com>.
Respondent registered and uses the <sttechnologies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the ST trademark
pursuant to Policy ¶ 4(a)(i) via its multiple
trademark registrations. See Morgan
Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum
The <sttechnologies.com> domain name
contains Complainant’s ST mark followed by the generic
term “technologies” and the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD and a
generic terms that has an obvious relation to Complainant’s business is
insufficient to overcome the confusing similarity that results from using
Complainant’s ST mark in the circumstances here presented. Therefore, we conclude the <sttechnologies.com>
domain name to be confusingly similar to Complainant’s ST mark pursuant to
Policy ¶ 4(a)(i).
See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
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 Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights to or legitimate interests in the
disputed domain name. Once this is done,
the burden shifts to Respondent to show that it does indeed have rights to or
legitimate interests in the disputed domain name, whether pursuant to the provisions
Policy ¶ 4(c) or otherwise. See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights to or legitimate interests in the <sttechnologies.com> domain name
pursuant to Policy ¶ 4(a)(ii). Because
no response was submitted in this case, we may presume that Respondent has no
rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
However, we will
examine the record before us in consideration of the factors listed in Policy ¶
4(c) to determine if there is any basis for concluding that Respondent has
rights or interests in the disputed domain name cognizable under the Policy.
We begin by noting that there is no evidence in the record
suggesting that Respondent is commonly known by the <sttechnologies.com>
domain name. Moreover, Complainant
asserts, and Respondent does not deny, that Respondent has no license from or agreement
with Complainant authorizing Respondent to use the ST mark. In addition, the pertinent WHOIS information
identifies Respondent only as “BKARATO a/k/a AK
BKARATO.” Thus, Respondent has
not established rights to or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent has registered the domain name under the name ‘Ilyoup Paik
a/k/a David Sanders.’ Given the WHOIS
domain name registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.
We also observe that there is no dispute as to Complainant’s
allegation that Respondent is using the <sttechnologies.com> domain name, which
is we have found is confusingly similar to Complainant’s ST mark,
to advertise unrelated third-party websites.
We infer from the circumstances that Respondent receives click-through
fees when Internet users attempt to access the advertised sites. This use of the disputed domain name is not a
use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a noncommercial or fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii). See Fox News Network, LLC v.
Reid, D2002-1085 (WIPO
Additionally, we take note of the fact that Respondent’s undenied
offer to sell the <sttechnologies.com> domain name for
€7500, a sum demonstrably in excess of the cost of registration of the domain
name, is further evidence that Respondent does not have any rights to or
legitimate interests in the <sttechnologies.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v.
Fees, FA 937704 (Nat. Arb. Forum
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It appears from the record in this proceeding that, on
[w]hat
makes an offer to sell a domain [name] bad faith is some accompanying evidence
that the domain name was registered because of its value that is in some way
dependent on the trademark of another, and then an offer to sell it to the
trademark owner or a competitor of the trademark owner.
We have already
concluded from the facts presented that it may be presumed that Respondent
receives click-through fees for using the disputed domain to divert Internet
users to third-party websites. Because
Respondent’s domain name is confusingly similar to Complainant’s ST mark, Internet
users accessing Respondent’s domain may become confused as to the possibility of
Complainant’s affiliation with the disputed domain name and resulting
website. Respondent is thus attempting
to profit from this confusion. Therefore,
Respondent’s use of the <sttechnologies.com> domain name constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <sttechnologies.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 7, 2009
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