PSC Management Limited Partnership v. Sales
Claim Number: FA0905001262197
Complainant is PSC Management Limited Partnership (“Complainant”), represented by Cathryn
Berryman, of Winstead, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <perotsystems-mail.com>, registered with Godaddy.com, Inc.
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 May 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2009.
On May 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <perotsystems-mail.com> 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 May 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 3, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 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 world leader in the field of technology and business consulting and services, including systems management and systems integration.
Complainant uses the PEROT SYSTEMS service mark in connection with these services.
Complainant holds several registrations of this mark with the United States Patent and Trademark Office (“USPTO”) (e.g.: Reg. No. 1,654,114, issued August 13, 1991, renewed July 28, 2001).
Respondent registered the <perotsystems-mail.com> domain name on April 16, 2009.
The disputed domain name resolves to a website that displays no content except for a Google Apps template for new websites.
Respondent’s <perotsystems-mail.com> domain name is confusingly similar to Complainant’s PEROT SYSTEMS mark.
Respondent does not have any rights to or legitimate interests in the <perotsystems-mail.com> domain name.
Respondent registered and uses the <perotsystems-mail.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 service mark 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 PEROT SYSTEMS mark under Policy ¶ 4(a)(i) because it holds a registration of that mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a mark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <perotsystems-mail.com> domain name contains Complainant’s entire mark, and merely adds a hyphen, the generic term “mail,” and the generic top-level domain (“gTLD”) “.com”. The disputed domain name is confusingly similar to Complainant’s PEROT SYSTEMS mark under Policy ¶ 4(a)(i) because none of these additions to the mark sufficiently distinguishes the disputed domain name from the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001): “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such mark”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003):
The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.
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 Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to a complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name. The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the Complaint. We are therefore free to conclude that Respondent has no rights or interests recognizable under the Policy.
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).
Nonetheless, we elect to examine the record before us to determine if there is any basis for concluding that Respondent has such rights or interests.
In this connection, we first note that there is no dispute as to Complainant’s allegation to the effect that Respondent’s <perotsystems-mail.com> domain name resolves to a website that displays no content except for a Google Apps template for new websites. Accordingly, we conclude that Respondent’s failure to make an active use of the disputed domain name is not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
See also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of that domain name).
We note also that Respondent is listed in the pertinent WHOIS information merely as “Sales,” which indicates that Respondent is not commonly known by the contested <perotsystems-mail.com> domain name. For this reason, and because Respondent has not offered any evidence to indicate otherwise, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It appears from the circumstances here presented that Respondent registered the <perotsystems-mail.com> domain name with at least constructive knowledge of Complainant’s rights in the PEROT SYSTEMS service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Moreover, Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
We have already concluded that Respondent’s <perotsystems-mail.com> domain name resolves to a website that displays no content except for a Google Apps template for new websites. Respondent’s failure to make active use of , or even preparations to use, the disputed domain name demonstrates bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make active use of a domain name satisfies the requirements of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name, or of a website that connects with that domain name, and that failure to make an active use of a domain name permits an inference of registration and use of the domain in bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <perotsystems-mail.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 23, 2009
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