national arbitration forum

 

DECISION

 

STMicroelectronics, Inc. v. BKARATO a/k/a AK BKARATO

Claim Number: FA0903001254574

 

PARTIES

Complainant is STMicroelectronics, Inc. (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc., Texas, USA.  Respondent is BKARATO a/k/a AK BKARATO (“Respondent”), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sttechnologies.com>, registered with Business.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2009.

 

On March 27, 2009, Business confirmed by e-mail to the National Arbitration Forum that the <sttechnologies.com> domain name is registered with Business and that Respondent is the current registrant of the name.  Business has verified that Respondent is bound by the Business 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 April 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 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 postmaster@sttechnologies.com by e-mail.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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 June 13, 2000) and the Intellectual Property Authority of Singapore (“IPOS”) (Reg. No. T02/01925J, issued Feb. 18, 2003).

 

Respondent has no license from or agreement with Complainant authorizing Respondent to use the ST mark.

 

Respondent registered the <sttechnologies.com> domain name on March 22, 2009. 

 

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.

 

FINDINGS

(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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 Nov. 29, 2005) (finding that because a complainant had registered its mark with national trademark authorities, “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

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 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 Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of a complainant combined with a generic word or term); further see Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to a complainant’s BROADCOM mark).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 Jan. 4, 2008):

 

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 Oct. 1, 2002):

 

 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 Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003):

 

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 Feb. 18, 2003) (finding that a respondent’s use of a disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

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 Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to a complainant suggests that a respondent has no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to a complainant for more than its out-of-pocket registration costs, that is additional evidence that that respondent lacks rights to and legitimate interests in the disputed domain name).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

It appears from the record in this proceeding that, on March 25, 2009, only three days after Respondent’s registration of the disputed domain name, Respondent offered to sell the domain to Complainant for €7500.  In these circumstances Respondent’s offer to sell the disputed domain for more than the out-of-pocket costs of acquisition of the domain is evidence of Respondent’s bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding a respondent’s offer to sell a domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002):

 

[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 June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to Respondent’s own website, likely profiting from this activity); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).

 

For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

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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