Dialogic Corporation v. OnNet (3) c/o Network Operations
Claim Number: FA1004001317863
Complainant is Dialogic
Corporation (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C., P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dialogic.net>, registered with Directi Internet Solutions Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2010.
On April 8, 2010, Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <dialogic.net> domain name is registered with Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. 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 April 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dialogic.net. Also on April 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of a Written Notice, as defined in Rule 1. 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 <dialogic.net> domain name is identical to Complainant’s DIALOGIC mark.
2. Respondent does not have any rights or legitimate interests in the <dialogic.net> domain name.
3. Respondent registered and used the <dialogic.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dialogic Corporation, provides communications-enabling technology solutions. Complainant also manufactures and sells a variety of communication-enabling products including servers and gateways, and software, which are featured in an array of technology and solutions, including computers, networking equipment, mobile phones, and messaging systems, among other places. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DIALOGIC mark (e.g., Reg. No. 1,526,571 registered on February 28, 1989).
Respondent registered the <dialogic.net> domain name on January 31, 1997. The disputed domain name resolves to a website that displays the DIALOGIC mark and provides links to third-party websites, some of which directly compete with Complainant’s business.
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 asserts rights in the DIALOGIC mark through its registration of this mark with the USPTO (e.g., Reg. No. 1,526,571 registered on February 28, 1989). The Panel finds this registration establishes Complainant’s rights in the DIALOGIC mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues Respondent’s disputed <dialogic.net> domain name is identical to its DIALOGIC mark. Respondent uses Complainant’s mark in its entirety in the disputed domain name. Respondent then attaches the generic top-level domain (“gTLD”) “.net” to Complainant’s mark in the disputed domain name. The Panel finds this addition does not render Respondent’s disputed domain name distinct from Complainant’s mark. Therefore, the Panel finds Respondent’s disputed <dialogic.net> domain name is identical to its DIALOGIC mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must establish a prima facie case showing Respondent lacks rights or legitimate interests in the <dialogic.net> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to submit a response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims Respondent is not authorized to use Complainant’s mark in a domain name. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts Respondent’s disputed <dialogic.net>
domain name resolves to a website that provides advertisements for communications
and technology-related products and links that direct Internet users to
third-party websites, some of which provide these competing products. Complainant argues Respondent most likely
profits from this use of the disputed domain name through the receipt of
click-through fees. The Panel finds
Respondent’s use of the disputed domain name does not constitute 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 Jerry Damson, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s use of the confusingly similar disputed <dialogic.net> domain name to redirect Internet users to third-party websites, including websites of Complainant’s competitors, disrupts Complainant’s business and constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
In addition, Complainant argues Respondent is attempting to
use the disputed domain name to intentionally attract, for commercial gain,
Internet users to its website by creating a likelihood of confusion with
Complainant and its DIALOGIC mark as to the source, sponsorship, affiliation,
and/or endorsement of Respondent and/or its website. As previously discussed, Respondent most
likely profits from the receipt of click-through fees through its use of the
confusingly similar disputed <dialogic.net> domain name. Therefore, the Panel finds Respondent’s use
of the disputed domain name constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dialogic.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 18, 2010
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