national arbitration forum

 

DECISION

 

Sun Microsystems, Inc. v. Dilma Aedo Mendez c/o Libela Gestion Sms and Libela Gestion sms LTDA c/o Dilma Aedo

Claim Number: FA0911001293581

 

PARTIES

Complainant is Sun Microsystems, Inc. (“Complainant”), represented by Andrew N. Downer, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA.  Respondent is Dilma Aedo Mendez c/o Libela Gestion Sms and Libela Gestion sms LTDA c/o Dilma Aedo (“Respondent”), Chile.

 

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.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 August 18, 2009.  The disputed domain names all resolve to similar websites in different languages.  The resolving websites contain information about Complainant’s computer software and offer a free software download.  When an Internet user clicks to download the software, a pop-up ad appears requiring the Internet user to send a text message to receive a code to download the software.  Respondent receives a fee from the text.

 

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 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.

 

Identical and/or Confusingly Similar

 

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.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  Previous panels have also found that a complainant is not required to register its mark within the country of the respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Complainant holds multiple trademark registrations of the DURALAST mark with the USPTO (e.g., Reg. No. 1,467,999 issued December 8, 1987).  Therefore, the Panel finds Complainant has established rights in the OPENOFFICE.ORG mark through Complainant’s trademark registration.

 

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 France, “pt” for Portugal, “pl” for Poland, or “nl” for the Netherlands), a generic term (“gratuity”), or a number (“2009” or “09”) to Complainant’s mark.  The disputed domain names also replace part of Complainant’s mark, “ORG,” with a different generic top-level domain (“gTLD”) “.com.”  The Panel finds the removal of a part of Complainant’s mark and the additions of generic letters, a generic term, numbers, and a gTLD are insufficient to adequately distinguish the disputed domain names from Complainant’s mark.  See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, the Panel finds Respondent’s domain names are confusingly similar to Complainant’s OPENOFFICE.ORG mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

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.

 

Registration and Use in Bad Faith

 

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.

 

DECISION

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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