SAS Institute Inc. v. ALU a/k/a J. Barein
Claim Number: FA0209000126631
Complainant is SAS Institute Inc., Cary, NC (“Complainant”) represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC. Respondent is ALU and J. Barein, Silver Spring, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sasinstitute.net> and <sasinstitute.org>, registered with Register.com.
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.
Judge Irving H. Perluss (Retired) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2002; the Forum received a hard copy of the Complaint on September 30, 2002.
On September 30, 2002, Register.com confirmed by e-mail to the Forum that the domain names <sasinstitute.net> and <sasinstitute.org> are registered with Register.com and that the Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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 September 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 2002 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 and email@example.com by e-mail.
A timely Response was received and determined to be complete on October 21, 2002.
On October 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant was founded in 1976 and has since that time continually used the SAS mark to identify its computer software-related products and services. Further, since as early as 1976, Complainant has used the mark SAS INSTITUTE in connection with computer training manuals. Today, Complainant is the largest privately owned software company in the world and serves more than 38,000 business, government and university sites in 119 countries. The SAS INSTITUTE and SAS marks are recognized and identified worldwide to identify excellent software solutions, software consulting services, and software performance support. Complainant’s products and services are advertised over the Internet via a website hosted at the address <sas.com>. Complainant has expended considerable time and resources in promoting its SAS INSTITUTE and SAS marks and enjoys tremendous goodwill and recognition in these marks. Complainant registered its SAS INSTITUTE mark with the U.S. Patent & Trademark Office under Reg. No. 1,263,595 on January 10, 1984. It also has numerous registered SAS trademarks.
2. Respondent registered the disputed domain names on July 14, 2002.
3. The disputed domain names are identical and confusingly similar to Complainant’s marks. An addition of a top-level domain does not relieve the infringement of a trademark. Complainant has demonstrated the requirements of Policy ¶ 4(a)(i).
4. Respondent has not made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services. Respondent is not commonly known by the disputed domain names. Respondent is disrupting and preventing Complainant from conducting its business. Thus, Respondent does not have rights or a legitimate interest in the disputed domain names. Complainant has demonstrated the requirements of Policy ¶ 4(a)(ii).
5. Respondent has registered the disputed domain names in bad faith. Paragraph 4(b) of the Policy sets forth a non-exclusive list of factors for determining bad faith. Respondent’s conduct with respect to the domain names indicates that Respondent has registered the domain names primarily for the purpose of selling the domain name registrations for a profit. At the time Respondent registered the domain names (i.e., July 14, 2002), Respondent was on constructive notice of Complainant’s rights in the SAS INSTITUTE mark by virtue of Complainant’s incontestable U.S. trademark registration for that mark. Further, as of that date, Respondent and/or a party reasonably believed to be affiliated with Respondent had been served with a Complaint under the usTLD Dispute Resolution Policy regarding the bad faith registration of the domain name <sasinstitute.us>. See SAS Inst., Inc. v. Farzad Bahreini, FA 115038 (Nat. Arb. Forum Aug. 28, 2002). In that case, a party identified as Farzad Bahreini located, as Respondent is, in Silver Springs, Maryland, and with a telephone and fax number identical to that of Respondent, had registered the domain name <sasinstitute.us> and had posted a website inviting bids for that domain name registration. Mr. Bahreini was served with a Complaint under the usTLD Policy on July 8, 2002, six days prior to the date on which Respondent registered the disputed domain names. Thus, Respondent had actual notice and the registration of the disputed domain names by Respondent is part of a pattern of conduct seeking to benefit from the valuable reputation and goodwill of Complainant’s SAS INSTITUTE and SAS trademarks.
6. Respondent’s use of Complainant’s entire mark in the domain names serves as a further indication of bad faith. The use by Respondent of Complainant’s entire mark makes it difficult to infer a legitimate use of the domain names by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO Mar. 10, 2000), Complainant filed a WIPO complaint against the registrant of the domain name <cellularonechina.com> because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, “it is not possible to conceive of a plausible circumstance in which [r]espondent could legitimately use the domain name.” Thus, Complainant has demonstrated the requirements of Policy ¶ 4(a)(iii).
1. Complainant is only using <sas.com> in the Internet and is not directly using <sasinstitute> or <sasinstitute.com> to promote its products and services over the Internet. <sasinstitute.com> only resolves into <sas.com>, and in <sas.com> there is no mention of <sasinstitute>.
2. Complainant’s contention that the domain names are legally equivalent and confusingly similar at numerous times has been rejected by Panels applying the Policy. The addition of a “.net” or “.org” is not always the same as a “.com” name. Therefore, Complainant’s allegation that Respondent’s domain names are each identical to Complainant’s SAS INSTITUTE service mark cannot be accepted.
3. Respondent is in the planning stage at this time and intends to use the registered names as educational divisions of ALU to offer correspondence courses in tools of statistical analysis. Complainant’s product is only one kind of the general statistical analysis tools. Respondent argues that general terms cannot be monopolized by one company.
4. It is not true that by registering the disputed domain names Respondent has made it more difficult for consumers to find information on the Internet about Complainant because anyone familiar with Complainant’s products will naturally use <sas.com> and will be instructed by Complainant to use <sas.com>, which is Complainant’s only website. Even if they want to use <sasinstitute> name, “.com” is always the first choice for any prospective customer, which is already owned by Complainant.
5. Respondent has not advertised and has made no attempt to sell the disputed domain name registrations and has no intention of selling its rights in the names.
6. Respondent has made some steps in preparations to use the disputed domain names to offer correspondence classes and the domain names will resolve to a website in the future. Respondent asserts that no one company should be allowed to monopolize the term “Statistical Analysis Systems.” The same way that no one company can monopolize “Historical Analysis Systems” or “Economic Analysis Systems.”
FINDINGS AND CONCLUSIONS
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.
Identical and/or Confusingly Similar
There can be no doubt but that the disputed domain names are confusingly similar and, indeed, identical to Complainant’s registered marks and the Panel so finds. The generic top-level domain (“gTLD”) customarily is disregarded in UDRP cases involving gTLDs such as “.com” and “.net.” See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions, Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which Complainant has asserted rights).
Of particular interest, in this proceeding with respect to this issue is the direct precedent of SAS Inst., Inc. v. Farzad Bahreini, FA 115038 (Nat. Arb. Forum Aug. 26, 2002) (determining the domain name <sasinstitute.us> to be identical to Complainant’s SAS family of marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, a Respondent may be found to have rights and a legitimate interest in a disputed domain name by demonstrating, without limitation, any of the following factors:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Clearly, paragraph (ii) is not applicable here. However, Respondent apparently claims it falls within paragraphs (i) and (iii), because it proposes it is planning to use the disputed domain names “. . . as educational divisions of ALU to offer correspondence courses in tools of statistical analysis.”
There is no evidence in the record to support this assertion. It has been held that a Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Moreover, it has been held that the registration of an infringing domain name in order to opportunistically trade on the goodwill of Complainant’s mark does not constitute a bona fide offering of goods or services, nor does it represent a legitimate noncommercial or fair use of the domain name. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds and concludes that Respondent does not have rights or a legitimate interest in the disputed domain names.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Paragraph 4(b) provides:
[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The words “source, sponsorship, affiliation, or endorsement” are particularly apt here. Inevitably, the Panel believes that consumers would conclude that the domain names in issue were endorsed and sponsored by Complainant.
In addition to the demonstration of bad faith by the application of subparagraph (iv) of Section 4(b) of the Policy, there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively. How could it have not been?
The evidence shows that as of July 14, 2002 (the registration date of the disputed domain names here) Respondent and/or a party reasonably believed to be affiliated with Respondent had been served with a Complaint under the usTLD Dispute Resolution Policy regarding the bad faith registration of the domain name <sasinstitute.us>. See SAS Inst., Inc. v. Farzad Bahreini, FA115038 (Nat. Arb. Forum Aug. 28, 2002), supra.
The Panel finds and concludes that Respondent on the date of the registration of the disputed domain names had actual as well as constructive notice of Complainant’s family of marks.
In Interstellar Starship Servs., Ltd. v. Epix, Inc., 184 F.3d 1107, 1111 (9th Cir. Or. 1999) it was said:
However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX’. Adopting a designation with the knowledge of its trademark status permits a presumption of intent to deceive. See, Brookfield, 174 F.3d 15 1059 (Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993).) In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 550 F.2d at 354.
Thus, it is found and concluded that the disputed domain names in issue were registered in bad faith.
The Panel recognizes that “use” in bad faith also is required in addition to bad faith “registration.”
The Panel heretofore has determined that Respondent has no rights or legitimate interest in the disputed domain names, and that he has registered the names in bad faith. It makes no sense whatsoever to wait until Respondent actually “uses” the names, when inevitably, if there is such use, it will create the confusion described in the Policy.
Under similar circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. Green Prods. Co. v. Independence By-Products Co., 992 F.Supp. 1070 (N.D. Iowa 1997). The threatened harm is “use.” See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum, Mar. 19, 2001); see also Hungry Minds, Inc. v. Mall for Dummies, FA 96635 (Nat. Arb. Forum. Apr. 4, 2001).
In any event, there is “use” because Respondent has “passively held” the disputed domain names since its registration despite his assertion that he is planning to create a website. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Panel finds and determines, accordingly, that Respondent registered and used the disputed domain names in issue in bad faith.
Based on the above findings and conclusions, and pursuant to Policy ¶ 4(i), it is decided that the disputed domain names <sasinstitute.net> and <sasinstitute.org> registered by Respondent ALU shall be, and the same are, TRANSFERRED to Complainant, SAS Institute, Inc.
JUDGE IRVING H. PERLUSS
Dated: November 11, 2002
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 The Panel believes it to be unnecessary to determine whether Respondent in the cited case is the same Respondent as here, although the evidence suggests that he is one and the same. In any event, the Panel declines to determine whether issue preclusion is appropriate in a proceeding such as this.