Wyse Technology Inc. v. Wyse Choyce / Jozette Dowdell
Claim Number: FA1103001380743
Complainant is Wyse Technology Inc. (“Complainant”), represented by Lynne M.J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Wyse Choyce / Jozette Dowdell (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wysechoyce.com> and <wysechoyce.org>, 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 March 28, 2011; the National Arbitration Forum received payment on March 31, 2011.
On March 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wysechoyce.com> and <wysechoyce.org> 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 April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@wysechoyce.com and postmaster@wysechoyce.org. Also on April 6, 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 April 29, 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 <wysechoyce.com> and <wysechoyce.org> domain names are confusingly similar to Complainant’s WYSE mark.
2. Respondent does not have any rights or legitimate interests in the <wysechoyce.com> and <wysechoyce.org> domain names.
3. Respondent registered and used the <wysechoyce.com> and <wysechoyce.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wyse Technology Inc., states it uses the WYSE mark for goods and services relating to computers, computer hardware and computer peripherals, computer operating system software, thin, zero, and cloud client operating system software, and computer consulting services. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WYSE mark (e.g., Reg. No. 1,461,695 issued October 20, 1987).
Respondent registered the <wysechoyce.com> and <wysechoyce.org>
domain names on January 15, 2001 and January 16, 2011, respectively. The
disputed domain names resolve to pay-per-click websites.
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 WYSE mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,461,695 issued October 20, 1987). The Panel finds this federal trademark registration sufficiently proves Complainant’s rights in the WYSE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant avers Respondent’s <wysechoyce.com> and <wysechoyce.org> domain names are confusingly similar to its WYSE mark. Respondent fully incorporates Complainant’s mark in the disputed domain names and then merely attaches a misspelled version of the word “choice.” In addition, Respondent affixes the generic top-level domains (“gTLDs”) “.com” or “.org” to Complainant’s mark in the disputed domain names. The Panel finds Respondent’s additions fail to sufficiently distinguish its domain name from Complainant’s 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 Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds Respondent’s <wysechoyce.com> and <wysechoyce.org> domain names are confusingly similar to Complainant’s WYSE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show Respondent lacks rights or legitimate interests in the <wysechoyce.com> and <wysechoyce.org> domain names under Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. 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.”). Although Respondent has failed to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant states it has not licensed, permitted, or authorized Respondent to use its WYSE mark in a domain name. Although the WHOIS information lists “Wyse Choyce / Jozette Dowdell” as the registrant of the <wysechoyce.com> and <wysechoyce.org> domain names, the Panel may find Respondent fails to provide affirmative evidence that it is actually known by the disputed domain names. Therefore, the Panel holds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant alleges the <wysechoyce.com> and <wysechoyce.org> domain names resolve to pay-per-click websites. Complainant submits screen shots of the resolving websites. These images show directory websites that list hyperlinks for third-party sites that are unrelated to Complainant. The Panel presumes that Respondent profits from its use of the disputed domain names through the receipt of click-through fees. Therefore, the Panel holds Respondent does not use the <wysechoyce.com> and <wysechoyce.org> 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
As previously discussed, Respondent most likely profits from its use of the <wysechoyce.com> and <wysechoyce.org> domain names, which are confusingly similar to Complainant’s WYSE mark. 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 WYSE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Accordingly, the Panel hold Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under 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 <wysechoyce.com> and <wysechoyce.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 6, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page