SunGard Development Corporation v. Kasper
Sorensen
Claim
Number: FA1008001338464
PARTIES
Complainant
is SunGard
Development Corporation (“Complainant”), represented by James J. Johnston, of Dechert LLP,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The Domain
Names at issue are <team-sungard.com> and <teamsungard.com>,
registered with Ascio Technologies.
PANEL
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.
Dawn
Osborne of Palmer Biggs Legal as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August 2, 2010.
On August 3, 2010, Ascio
Technologies confirmed by e-mail to the National Arbitration Forum that
the <team-sungard.com>
and <teamsungard.com>
domain names are registered with Ascio
Technologies and that the Respondent is the current registrant of the
names. Ascio
Technologies has verified that Respondent is bound by the Ascio Technologies 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 August 4, 2010, the Forum served the Complaint
and all Annexes, including a Written Notice of the Complaint, setting a
deadline of August 24, 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@team-sungard.com
and postmaster@teamsungard.com. Also on
August 4, 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.
A timely
Response was received and determined to be complete on August 16, 2010.
On
26 August 2010, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Dawn
Osborne of Palmer Biggs Legal as Panelist.
RELIEF
SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The
Complainant’s submissions can be summarized as follows:
The
Complainant or its associated company own registrations for SUNGARD across the
world including in the
The
Domain Names were registered May 17, 2010, many years after the Complainant’s
rights arose. They do not resolve to web sites.
On May
16, 2010 one day before the Domain Names were registered, the Danish press
announced that Sungard would sponsor a bicycle road racing team sponsored by
Saxo Bank known as Team Saxo Bank. The Respondent registered the disputed
domain names to capitalize on the Complainant’s goodwill and is not licensed or
known by the SUNGARD mark and has no rights or legitimate interests in the
Domain Names, not using them for any bona fide business.
The
Domain Names are confusingly similar to the Complainant’s SUNGARD trade mark
consisting of the mark and the generic word “team” (and in one case with an
additional hyphen), referring to an element of the Complainant’s business in
sponsoring teams.
The
Domain Names were clearly registered in bad faith one day after the reports of
sponsorship of the same team that used the <teamsaxobank.com> and <team-saxobank.com>
domain names. The Respondent therefore copied the phrasing of the existing
team’s domain names and therefore had actual knowledge and a bad faith motive.
B.
Respondent
The
Respondent’s contentions can be summarized as follows:
The
Respondent has never used the mark in the field of software or related services
the field for which the Complainant’s trade marks are registered.
The
Complainant has received positive publicity in the Danish press as a result of
the Respondent registering the Domain Names.
The
Respondent was not aware of the terms of his registration agreement or the
Policy at the time of Registration of the Domain Names so he cannot be in bad
faith. Indeed if he had been aware of the terms of the agreement there would be
no point in registering the Domain Names. He can see now reading the Policy how
his actions could be conceived of as in bad faith.
The
Respondent has not used the Domain Names as has no intention to do so and indicates
that he does not understand what “use” means under the Policy.
If the
Respondent had been presented with the Complainant’s arguments and evidence
prior to the filing of a complaint he would have agreed to transfer the Domain
Names to the Complainant and will do so upon decision of these proceedings
FINDINGS
The
Complainant or its associated company is the owner of, inter alia, US and
Danish Registered Trade Marks for SUNGARD and has been using the mark in
commerce itself or through predecessors since 1978.
The
Respondent registered the Domain Names on May 17, 2010 and now requests that they
be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the
Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2) the 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 Panelist's opinion
is that the Complainant has rights in a trade mark that is confusingly similar to
the Domain Names for the purposes of the Policy (the Domain Names consisting of
the Complainant’s registered trade mark and the generic term “team” with in one
case an additional hyphen), that the Respondent has no legitimate interest in
the Domain Names (he has given no reason for registration in his Response) and
has registered and used them in bad faith within the meaning of the Policy. The
timing of the registration of the Domain Names one day after the Danish press
announced the sponsorship of the Saxo Bank team by Sungard and the mimicking of
the phrasing of the Saxo Bank Team domain names indicates that the Respondent
knew about the Complainant and its rights and was targeting the Complainant and
the team it was sponsoring by registering the Domain Names. The Respondent says
he did not intend to actually use the Domain Names. As such, the Respondent
appears to have simply been warehousing the names presumably for profit or
cybersquatting, to use the commonly used term, a classic case of bad faith under
the Policy. He admits if he had understood the Policy he would not have registered
them. As such, the panelist finds that the Respondent has registered and used
the Domain names in bad faith within the meaning of the Policy.
However, it has been
held that in circumstances such as this where the Respondent has not contested
the transfer of the Domain Name and agrees to transfer the Domain Name to the
Complainant, the Panel may decide to forego the lengthy traditional UDRP
analysis and order an immediate transfer of the domain name. See
Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625
(Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where
the respondent stipulated to the transfer); see also Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004)
(“In this case, the parties have both asked for the domain name to be
transferred to the Complainant . . . Since the requests of the parties in this
case are identical, the Panel has no scope to do anything other than to
recognize the common request, and it has no mandate to make findings of fact or
of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v.
Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such
circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names.”). As
such, the Panel will order the transfer of the Domain Names to the Complainant
without further discussion.
DECISION
Having established all
three elements required under the ICANN Policy and having reviewed the
Complainant’s request for relief and the Respondent’s consent to that relief, the
Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <team-sungard.com> and <teamsungard.com>
domain names be TRANSFERRED from Respondent to Complainant.
Dawn
Osborne of Palmer Biggs Legal, Panelist
Dated: August 27, 2010
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