MYOB US, Inc. v. Gary Lam a/k/a XC2
Claim Number: FA0907001273357
Complainant is MYOB US, Inc. (“Complainant”), represented by Barry
Werbin, of Herrick, Feinstein LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <accountedge.com>, registered with Moniker.
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 Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 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@accountedge.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <accountedge.com> domain name is identical to Complainant’s ACCOUNTEDGE mark.
2. Respondent does not have any rights or legitimate interests in the <accountedge.com> domain name.
3. Respondent registered and used the <accountedge.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MYOB US, Inc., is in
the business of developing and marketing financial and accounting software. Complainant has used the ACCOUNTEDGE mark in
connection with its financial and accounting software since
Respondent registered the <accountedge.com> domain name on
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others, and has been ordered by
previous UDRP panels to transfer the disputed domain names to the respective
complainants. See NBC Universal, Inc. v. XC2,
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.”).
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:
(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.
Complainant has a trademark registration with the USPTO for
the ACCOUNTEDGE mark (Reg. No. 2,506,134 issued
Complainant argues that
Respondent’s <accountedge.com> domain name is identical to
Complainant’s ACCOUNTEDGE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds
that the addition of a gTLD is irrelevant in distinguishing a disputed domain
from a registered mark. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the <accountedge.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is neither commonly
known by nor licensed to register the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Gary Lam a/k/a XC2.” The Panel finds that the WHOIS
information demonstrates that Respondent is not commonly known by the disputed
domain name. Therefore, pursuant to
Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the <accountedge.com>
domain name. See 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 WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent registered the <accountedge.com>
domain name on May 24,
2002 and is using the resolving website to display links advertising
third-party websites, some of which are in competition with Complainant’s
offering of financial and accounting software.
The Panel infers that Respondent is using the disputed domain name to
earn click-through fees, and thus finds that Respondent has not made 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 Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain
name to maintain a commercial website with links to the products and services
of the complainant’s competitors did not represent 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 Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence that Respondent has a history
of registering domain names infringing upon the trademark rights of others, and
has been ordered by previous UDRP panels to transfer the disputed domain names
to the respective complainants. See NBC Universal, Inc. v. XC2,
The Panel finds that Respondent’s use of the <accountedge.com> domain name to disrupt the
business of Complainant by offering links to competitors websites in the
finance and accounting software industry is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (
Lastly, Respondent is using the <accountedge.com> domain name to intentionally divert Internet users to the
associated website, which displays third-party links to competing
websites. In cases such as this, the
Panel presumes that Respondent is collecting click-through fees and attempting
to profit by creating a likelihood of confusion between Complainant’s ACCOUNTEDGE
mark and the confusingly similar <accountedge.com> domain
name. The Panel finds that Respondent’s
use of the disputed domain name is further evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <accountedge.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 1, 2009
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