S.C. Solutions and Consulting S.R.L. v. Domain cellejesus409@gmail.com +40.65363636
Claim Number: FA1007001333690
Complainant is S.C.
Solutions and Consulting S.R.L. (“Complainant”), represented by John
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <soft82.com>, registered with OnlineNIC, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2010.
On July 13, 2010, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <soft82.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 July 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@soft82.com. Also on July 15, 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 August 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.)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 "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 <soft82.com> domain name is identical to Complainant’s SOFT82 mark.
2. Respondent does not have any rights or legitimate interests in the <soft82.com> domain name.
3. Respondent registered and used the <soft82.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, S.C. Solutions and Consulting S.R.L., provides
a software download service that provides users the ability to download
freeware, shareware, drivers, and games from a single centralized
location. Complainant registered the <soft82.com>
domain name on January 31, 2006
after which point Respondent came into possession of the disputed domain name
when Respondent gained unauthorized access to Complainant’s email account and
subsequently transferred the disputed domain name. Complainant asserts common law rights in the
SOFT82 mark based on its continuous use of the mark since 2006.
Respondent, Domain cellejesus409@gmail.com +40.65363636, transferred the disputed domain name sometime after April 15, 2010. The disputed domain name redirects Internet users to <soft222.com> and <soft333.com> which resolve to websites that directly compete with Complainant.
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.
The Panel finds that Complainant need not to have registered its SOFT82 mark with a federal trademark authority in order to establish trademark rights in the mark. The Panel finds that Complainant may establish rights in the SOFT82 mark sufficient to meet the requirements of Policy ¶ 4(a)(i) by providing evidence of its common law rights in the mark and the acquisition of secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant asserts common law rights in the SOFT82 mark based on its prominent, continuous, and extensive use of the mark in connection with software download services since as early as December 5, 2006. Complainant further asserts that consumers have come to understand that Complainant’s SOFT82 mark as a distinctive identifier of Complainant’s download services, as evidenced by its presence as the number one Google search result for “soft82.” The Panel finds that Complainant’s continuous use of its SOFT82 mark are sufficient to establish Complainant’s common law rights in the disputed domain name and has developed subsequent secondary meanings. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant asserts that Respondent’s <soft82.com>
domain name is identical to Complainant’s SOFT82 mark. Respondent’s disputed domain name merely adds
the generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s
mark. The Panel finds that the addition of a gTLD is irrelevant in Policy ¶ 4(a)(i) as TLDs are required components of all domain
names. See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also W. Union Holdings,
Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name WUIB is part of the Internet address and does not add
source-identifying significance). Therefore, the Panel finds that
Respondent’s <soft82.com> domain
name is identical to Complainant’s SOFT82 mark.
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its assertions, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case. Respondent has failed to submit a Response to these proceedings which the Panel finds allows it to infer that the allegations in Complainant’s Complaint are true. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel will examine the record in light of the factors outlined in Policy ¶ 4(c) in order to make a complete determination as to whether or not Respondent has any rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has not been commonly
known by the disputed domain name. The
WHOIS information identifies the registrant of the disputed domain name as
“Domain cellejesus409@gmail.com +40.65363636.”
The Panel finds that the failure of the WHOIS information to identify
Respondent by the disputed domain name is evidence that Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant asserts that Respondent’s disputed domain name resolves to a website that features the exact same software download services as Complainant offers at its <soft82.org> domain name. The Panel finds that Respondent’s use of the disputed domain name to offer competing services is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and is using the <soft82.com> domain name for the purpose of disrupting Complainant’s business. Complainant contends that Respondent intentionally hijacked Complainant’s domain name by gaining unauthorized access to Complainant’s email account. Complainant further contends that Respondent changed the ownership records and has disrupted the legitimate business activities of Complainant and are depriving Complainant of access to the domain name and its resolving website. The Panel finds that Respondent’s registration and use of the disputed domain name to redirect Internet users to its own websites offering identical software download services constitutes bad faith pursuant to 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant argues that Respondent is clearly creating a likelihood of confusion with Complainant’s SOFT82 mark as to the source of, or affiliation with, the disputed domain name. The Panel finds that Respondent’s registration and use of the disputed domain name to redirect Internet users to its <soft222.com> and <soft333.com> websites that feature content identical to that featured on Complainant’s own <soft82.org> website constitutes bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 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).
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 <soft82.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 20, 2010
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