Solazyme, Inc. v. Solazyme / Solazyme Inc.
Claim Number: FA1101001369866
Complainant is Solazyme, Inc. (“Complainant”), represented by John C. Baum and Alica Del Valle of Owen, Wickersham, & Erickson, P.C., California, USA. Respondent is Solazyme / Solazyme Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solazymeonline.com>, registered with NAME.COM LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2011; the National Arbitration Forum received payment on January 27, 2011.
On January 28, 2011, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <solazymeonline.com> domain name is registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.COM LLC 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 January 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2011 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@solazymeonline.com. Also on January 28, 2011, 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 February 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns exclusive rights to its SOLAZYME service mark, which it uses in connection with the marketing of its technology used to convert algae into fuel and other useful products.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its SOLAZYME service mark (including Reg. No. 3,173,817, issued November 21, 2006).
Respondent registered the <solazymeonline.com> domain name on September 25, 2010.
The disputed domain name resolves to a website nearly identical to that of Complainant.
Respondent’s <solazymeonline.com> domain name is confusingly similar to Complainant’s SOLAZYME mark.
Respondent does not have any rights to or legitimate interests in the domain name <solazymeonline.com>.
Respondent registered and uses the disputed <solazymeonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Registration of a mark with a national governmental authority, such registration is sufficient to show a complainant’s rights in that mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Here, Complainant asserts rights in the SOLAZYME service mark through its registration of the mark with the USPTO. Accordingly, Complainant has established rights in its mark sufficient for purposes of Policy ¶ 4(a)(i).
Respondent’s <solazymeonline.com> domain name is confusingly similar to Complainant’s SOLAZYME mark. The disputed domain name contains Complainant’s entire mark, and merely adds the generic term “online” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the contested domain name do not adequately distinguish the domain name from the mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to a complainant’s BROADCOM mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Policy ¶ 4(a)(i) is satisfied.
Once a complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden of proof shifts to a respondent to prove that it has rights to or legitimate interests in a contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has made out a prima facie case under this head of the Policy. Because Respondent has failed to respond to the Complaint, we are free to conclude that Respondent lacks rights to and legitimate interests in the <solazymeonline.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not authorized to use the SOLAZYME mark, whether in a domain name or otherwise. This, coupled with Respondent’s failure to respond to the allegations of the Complaint, persuades us that, the purported identity of Respondent as shown in the pertinent WHOIS information (“Solazyme / Solazyme Inc.”) notwithstanding, Respondent is not commonly known by the contested domain so as to have established that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name). See also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004):
In its WHOIS contact information, Respondent lists its name and its administrative contact as … [identical to a complainant’s mark]…. However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
We next note that there is no dispute as to Complainant’s allegation that Respondent uses the disputed domain name in an attempt to pass itself off as Complainant by displaying a website resolving from the disputed domain name which is nearly identical to that of Complainant. This does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):
It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .
See also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where a respondent copied a complainant’s website in order to steal account information from that complainant’s customers, that respondent’s:
[E]xploitation of the goodwill and consumer trust surrounding the … mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is evidently using the disputed domain name in an attempt to pass itself off as Complainant on-line. This is evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002):
Unauthorized use of Complainant’s … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
In the circumstances here presented, it is also evident that Respondent is using the disputed domain name to benefit commercially from the deception of those Internet users who are redirected to Respondent’s website. This use of the contested domain name is evidence of bad faith registration and use 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 there in question was obviously connected with a complainant’s marks, thus creating a likelihood of confusion for a respondent’s commercial gain); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission, misleading Internet users by implying that that respondent was affiliated with that complainant).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <solazymeonline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 25, 2011
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