Sun Microsystems, Inc. v. Dilma Aedo Mendez c/o Libela Gestion Sms and Libela Gestion sms LTDA c/o Dilma Aedo
Claim Number: FA0911001293581
Complainant is Sun
Microsystems, Inc. (“Complainant”), represented by Andrew N. Downer, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com>, registered with 1 & 1 Internet AG.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2009. The Complaint was submitted in both Spanish and English.
On November 11, 2009, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names are registered with 1 & 1 Internet AG and that Respondent is the current registrant of the names. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 November 24, 2009, a Spanish language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 14, 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@openoffice2009.com, postmaster@openoffice-gratuit.com, postmaster@openoffice09fr.com, postmaster@openoffice-fr.com, postmaster@openoffice-pt.com, postmaster@openoffice-pl.com, and postmaster@openoffice-nl.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names are confusingly similar to Complainant’s OPENOFFICE.ORG mark.
2. Respondent does not have any rights or legitimate interests in the <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names.
3. Respondent registered and used the <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sun Microsystems, Inc., markets and sells computer hardware, computer software, network computing equipment, and related services. Complainant has used the OPENOFFICE.ORG mark in connection with computer software and related goods and services. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OPENOFFICE.ORG (Reg. No. 3,063,339 issued February 28, 2006).
Respondent registered the <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>,
<openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>,
and <openoffice-nl.com> domain names no earlier than
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 contends it has established rights in the
OPENOFFICE.ORG mark. Previous panels
have found that a trademark registration with a federal trademark authority is
sufficient to establish rights in a mark.
Complainant alleges Respondent’s <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>,
<openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>,
and <openoffice-nl.com> domain names are confusingly similar
to Complainant’s OPENOFFICE.ORG mark.
The disputed domain names simply add geographic abbreviations (“fr” for
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the disputed domain names. Complainant asserts that Respondent is not
authorized to use the OPENOFFICE.ORG mark.
The WHOIS information for the disputed domain name registrant is not
similar to the disputed domain names.
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges the disputed domain names all resolve to
similar websites in different languages.
The resolving websites contain information about Complainant’s computer
software products and offer a free download of the products. When an Internet user clicks to download, a
pop-up ad appears requiring the Internet user to text a number to Respondent to
receive a code to download. Respondent
receives a fee from the text. The Panel
finds this use of the disputed domain name is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also
Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14,
2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE
mark to redirect Internet users to respondent’s own website for commercial gain
does not constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names to resolve to websites in different languages. Each website contains information about Complainant’s software products and services and offers a free download of the software. Internet users are required to send a text to Respondent to receive a download code. Respondent receives a text messaging fee. Internet users interested in Complainant’s software products may instead attempt to download the product from Respondent for Respondent’s benefit, instead of Complainant. The Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s software business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant) .
Respondent commercially benefits from its use of the disputed domain names. Respondent receives a fee for each text message received from an Internet user attempting to download Complainant’s software product. The resolving websites contain Complainant’s mark and logo. Internet users searching for Complainant may become confused as to Complainant’s affiliation with and sponsorship of the disputed domain names and resolving websites. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel finds 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 <openoffice2009.com>, <openoffice-gratuit.com>, <openoffice09fr.com>, <openoffice-fr.com>, <openoffice-pt.com>, <openoffice-pl.com>, and <openoffice-nl.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 4, 2010
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