Maklaf Holdings, Inc. v. Bernard Stamm / Bredohri Software
Claim Number: FA1102001374233
Complainant is Maklaf Holdings, Inc. (“Complainant”), represented by Meghan Q. Toner of Hoffman Warnick LLC, New York, USA. Respondent is Bernard Stamm / Bredohri Software (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheetahproject.com> and <cheetahcollect.com>, registered with GoDaddy.com, 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 February 22, 2011; the National Arbitration Forum received payment on February 22, 2011.
On February 24, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheetahproject.com> and <cheetahcollect.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 March 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@cheetahproject.com and postmaster@cheetahcollect.com. Also on March 1, 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 March 23, 2011, 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 (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cheetahproject.com> and <cheetahcollect.com> domain names are confusingly similar to Complainant’s CHEETAH mark.
2. Respondent does not have any rights or legitimate interests in the <cheetahproject.com> and <cheetahcollect.com> domain names.
3. Respondent registered and used the <cheetahproject.com> and <cheetahcollect.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Maklaf Holdings, Inc., uses the CHEETAH mark in connection with various training and business consulting services, including project management related services. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CHEETAH mark (e.g., Reg. No. 3,240,772 issued May 8, 2007).
Respondent, Bernard Stamm / Bredohri Software, registered the <cheetahproject.com> domain name on March 26, 2008 and the <cheetahcollect.com> domain name on May 31, 2007. The disputed domain names resolve to commercial websites that offer business software that may be of interest to Complainant’s customers.
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 claims rights in the CHEETAH mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,240,772 issued May 8, 2007). The Panel finds this trademark registration sufficiently proves Complainant’s rights in the CHEETAH mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Furthermore, the Panel holds it is irrelevant whether Complainant holds a trademark registration for the CHEETAH mark with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges the <cheetahproject.com> and <cheetahcollect.com> domain names are confusingly similar to its CHEETAH mark. Respondent fully incorporates Complainant’s mark in the disputed domain names and then merely adds the generic term “project” to the <cheetahproject.com> domain name and the generic term “collect” to the <cheetahcollect.com> domain name. Respondent also affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain names. The Panel finds the addition of a generic term and gTLD to a mark do not sufficiently distinguish a domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel holds Respondent’s <cheetahproject.com> and <cheetahcollect.com> domain names are confusingly similar to Complainant’s CHEETAH mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show that Respondent lacks rights or legitimate interests in the <cheetahproject.com> and <cheetahcollect.com> domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may infer from Respondent’s failure to submit a Response that Respondent lacks rights or legitimate interests in the domain names. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, despite Respondent’s failure to submit a Response, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information lists “Bernard Stamm / Bredohri Software” as the registrant of the <cheetahproject.com> and <cheetahcollect.com> domain names, which the Panel finds is not similar to either domain name. Therefore, without evidence to the contrary, the Panel determines Respondent is not commonly known by the disputed domain names under 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant claims the <cheetahproject.com> domain name resolves to a commercial website that provides “quote software to manage project progress, shared files, notes and contact management; specifically for collaboration.” Complainant also claims the <cheetahcollect.com> domain name resolves to a commercial website that provides a “debt collection software system and agency directory.” Complainant alleges the software on Respondent’s websites are related to Complainant’s business and project management related services. The Panel finds Respondent uses confusingly similar domain names to operate commercial websites that offer software products and services that compete with Complainant’s business. Therefore, the Panel holds Respondent does not use the <cheetahproject.com> and <cheetahcollect.com> domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds the <cheetahproject.com> and <cheetahcollect.com> domain names redirect Internet users seeking Complainant’s business to websites that offer software products and services that may be of interest to Complainant’s customers. Therefore, the Panel holds Respondent’s domain names disrupt Complainant’s business, behavior that qualifies as registration and use in bad faith under 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
As previously discussed, Respondent uses the disputed domain names in connection with commercial websites. Moreover, the <cheetahproject.com> and <cheetahcollect.com> domain names are confusingly similar to Complainant’s CHEETAH mark. Respondent also features Complainant’s CHEETAH mark on the resolving websites. Therefore, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s CHEETAH mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or products or services on Respondent’s websites. As a result, the Panel finds Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheetahproject.com> and <cheetahcollect.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 28, 2011
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