Novell, Inc. v. GFC a/k/a Brett Winkler
Claim Number: FA0212000137039
PARTIES
Complainant
is Novell, Inc., Provo, UT
(“Complainant”) represented by Vanessa
B. Pierce. Respondent is GFC a/k/a Brett Winkler,
Baton Rouge, LA (“Respondent”).
The
domain name at issue is <supportnovell.com>,
registered with gkg.net, Inc.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 11, 2002; the Forum received a hard copy of the
Complaint on December 13, 2002.
On
December 16, 2002, gkg.net, Inc. confirmed by e-mail to the Forum that the
domain name <supportnovell.com>
is registered with gkg.net, Inc. and that Respondent is the current registrant
of the name. Gkg.net, Inc. has verified
that Respondent is bound by the GKG.NET, 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
December 18, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 7, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@supportnovell.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
January 17, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant asserts the following in the
Complaint:
1. The <supportnovell.com> domain
name is confusingly similar to Complainant’s NOVELL mark.
2. Respondent has no rights or legitimate
interests in the <supportnovell.com>
domain name.
3. Respondent registered and used the <supportnovell.com>
domain name in bad faith.
B.
Respondent has failed to submit a Response in this proceeding.
FINDINGS
Complainant holds numerous registrations
for NOVELL with the United States Patent and Trademark Office, including
Registration Numbers 1,338,892 and 2,169,906.
Complainant’s family of NOVELL marks is associated with computer network
and Internet services software, education courses, industry trade shows, and
consulting services. Complainant is
currently using the <support.novell.com> domain name to offer technical
support services to its customers.
Respondent registered the <supportnovell.com>
domain name on May 13, 2002. Respondent
is using the disputed domain name to resolve to <Bid4Tickets.com>. The website auctions off tickets to sporting
events and concerts.
DISCUSSION
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the NOVELL mark through registration with the United States Patent
and Trademark Office.
Respondent’s <supportnovell.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates Complainant’s entire NOVELL mark and merely adds the term
“support.” The addition of the term
“support” is descriptive of Complainant’s technical support services and
therefore does not create a distinct mark capable of overcoming a claim of
confusing similarity. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a
Response in this proceeding. Thus, the
Panel is permitted to accept all reasonable allegations and inferences in the
Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences
of fact in the allegations of Complainant 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”).
Moreover, Respondent has failed to invoke
any circumstances to demonstrate rights and legitimate interests in the domain
name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with respect of
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interest in the domain name because the Respondent
never submitted a response nor provided the Panel with evidence to suggest
otherwise).
Respondent is using the disputed domain
name to attract Internet users to its <Bid4Tickets.com> website. The use of a domain name incorporating
Complainant’s mark to attract Internet users to a site sponsored by Respondent
is not considered a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks).
Respondent’s website at the <supportnovell.com>
domain name is titled “Bid4Tickets.com,” and makes no reference to <supportnovell.com>.
Moreover, Respondent has submitted no evidence to establish that it is commonly
known as SUPPORT NOVELL or <supportnovell.com>. Thus, the Panel finds that Respondent has no
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use).
Thus, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <supportnovell.com>
domain name is confusingly similar to Complainant’s mark. Moreover, the domain name is almost
identical to Complainant’s own <support.novell.com> domain
name. The Panel is thus permitted to
infer that Respondent is using the disputed domain name to create a likelihood
of confusion to attract Internet users to its own website for commercial gain. This behavior evidences bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
Moreover, it can be inferred that
Respondent had actual knowledge of Complainant’s NOVELL mark when it registered
the <supportnovell.com> domain name because the domain name is so
similar to Complainant’s own domain name <support.novell.com>. The registration of a domain name
incorporating Complainant’s mark, despite actual knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Thus, the Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <supportnovell.com> be
TRANSFERRED from Respondent
to Complainant.
John J. Upchurch, Panelist
Dated: January 20, 2003
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