Lateral Software Solutions, Inc. v. Ryan Grady / Newbury Road
Claim Number: FA1010001355349
Complainant is Lateral Software Solutions, Inc. (“Complainant”), represented by Deborah L. Lively of Thompson & Knight LLP, Texas, USA. Respondent is Ryan Grady / Newbury Road (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <latnav.com> and <latnav.net> registered with TLDS, LLC DBA SRSPLUS.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2010; the National Arbitration Forum received payment on October 28, 2010.
On October 29, 2010, TLDS, LLC DBA SRSPLUS confirmed by e-mail to the National Arbitration Forum that the <latnav.com> and <latnav.net> domain names are registered with TLDS, LLC DBA SRSPLUS and that Respondent is the current registrant of the names. TLDS, LLC DBA SRSPLUS has verified that Respondent is bound by the TLDS, LLC DBA SRSPLUS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@latnav.com and postmaster@latnav.net. Also on October 29, 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 November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <latnav.com> and <latnav.net> domain names are identical to Complainant’s LATNAV mark.
2. Respondent does not have any rights or legitimate interests in the <latnav.com> and <latnav.net> domain names.
3. Respondent registered and used the <latnav.com> and <latnav.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lateral Software Solutions, Inc., provides software services for the oil and gas industry. Specifically, its software LATNAV makes it possible for companies to steer horizontal or extended reach wells in complex geologic settings. The LATNAV software originated with Blair Enterprises, Complainant’s predecessor in interest.
Respondent, Ryan Grady/Newbury Road, registered the disputed domain names on May 7, 2007. Respondent is using the domain names to advertise for its own web hosting service.
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 alleges sufficient rights to proceed with this claim. While Complainant has alleged a registered trademark with the United States Patent and Trademark Office, Complainant has not supplied the Panel with a copy of the registration or the registration number. Even so, the Panel may find rights present, absent federal registration. See 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)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant does provide the Panel with evidence of the use of the LATNAV mark. Complainant provides the Panel with brochures, other published material, and a declaration of use dating back to 1996. The Panel finds this evidence minimally establishes the necessary common law rights to pursue a domain name transfer claim under Policy ¶ 4(a)(i). See Association of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also 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).
The Panel finds that the disputed domain name is identical to Complainant’s mark. Respondent’s domain names are simply Complainant’s mark with the generic top-level domain (“gTLD”) “.com” and “.net” added. For the purpose of the confusingly similar analysis under Policy ¶ 4(a)(i), the addition of the gTLDs “.com” and “.net” are irrelevant. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the disputed domain names <latnav.com> and <latnav.net> are identical to Complainant’s LATNAV mark.
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. In a domain name transfer claim the burden shifts to the respondent to prove that the respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. The Panel finds that Complainant has made a sufficient prima facie case. Due to the fact that Respondent has failed to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests in the <latnav.com> and <latnav.net> domain names. Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The evidence in this case indicates that Respondent is not commonly known by the disputed domain names. Both disputed domain names’ WHOIS information indicate that the registrant’s identification information is not similar to either of the disputed domain names. From this information, the Panel presumes that Respondent is not commonly known by the domain names. This leads the Panel to conclude that Respondent is not commonly known by the <latnav.com> and <latnav.net> domain names under Policy ¶ 4(c)(ii). See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant alleges that Respondent is using the identical domain names to divert Internet users from its business. Respondent’s websites resolve to a list of links that promote Respondent’s business. The Panel presumes that Respondent gains through an increase in goodwill, if not directly financially, by displaying advertising for itself. This constitutes diversion for gain and thus indicates that Respondent has not made bona fide offerings of goods or services or legitimate noncommercial or fair uses of the domain names. Thus, the Panel concludes that Respondent has no rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Constellation Wines U.S., Inc. v. Texas Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
For the above reasons, the Panel finds Policy ¶ 4(a)(ii) has been met.
The Panel finds that Respondent registered, and has continued using, the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent is using domain names identical to Complainant’s mark for its own benefit. Internet users seeking Complainant’s business will accidently find themselves at Respondent’s website. Once there, the Internet users are confronted with advertisements for Respondent’s services. As noted above, Respondent undoubtedly benefits from this exposure. Use of this kind indicates bad faith on behalf of the Respondent pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel finds accordingly.
Therefore, Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <latnav.com> and <latnav.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 3, 2010
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