SafeNet, Inc. v. Digital Signature Dept. / Shakambaree Traders Pvt Ltd
Claim Number: FA1108001404103
Complainant is SafeNet, Inc. (“Complainant”), represented by Jennifer L. Dean of Drinker Biddle & Reath LLP, Washington, D.C., USA. Respondent is Digital Signature Dept. / Shakambaree Traders Pvt Ltd (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etokenindia.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2011; the National Arbitration Forum received payment on August 23, 2011.
On August 23, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <etokenindia.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 August 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@etokenindia.com. Also on August 25, 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 September 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <etokenindia.com> domain name is confusingly similar to Complainant’s ETOKEN mark.
2. Respondent does not have any rights or legitimate interests in the <etokenindia.com> domain name.
3. Respondent registered and used the <etokenindia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SafeNet, Inc., uses its ETOKEN mark to identify its authentication devices that are sold in numerous countries throughout the world. Complainant has multiple registrations for the ETOKEN mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), the United Kingdom Intellectual Property Office (“UKIPO”), the Japan Patent Office (“JPO”), and the Canadian Intellectual Property Office (“CIPO”):
OHIM
Reg. No. 1,033,059 registered January 28, 2000;
Reg. No. 1,052,679 registered January 2, 2003;
Reg. No. 3,057,601 registered November 15, 2007;
UKIPO
Reg. No. 2,186,752 registered March 10, 2000;
Reg. No. 2,184,463 registered March 9, 2001;
JPO
Reg. No. 4,355,218 registered January 28, 2000;
Reg. No. 4,504,596 registered September 7, 2001;
CIPO
Reg. No. 577,539 registered March 17, 2003; &
Reg. No. 592,409 registered October 16, 2003.
Respondent, Digital Signature Dept. / Shakambaree Traders Pvt Ltd, registered the <etokenindia.com> domain name on April 9, 2009. The disputed domain name resolves to a website actively promoting and selling purported ETOKEN products without attributing the products to Complainant and while displaying an exact copy of the stylized version of Complainant’s ETOKEN mark.
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 has multiple registrations for the ETOKEN mark with OHIM, UKIPO, the JPO, and CIPO:
OHIM
Reg. No. 1,033,059 registered January 28, 2000;
Reg. No. 1,052,679 registered January 2, 2003;
Reg. No. 3,057,601 registered November 15, 2007;
UKIPO
Reg. No. 2,186,752 registered March 10, 2000;
Reg. No. 2,184,463 registered March 9, 2001;
JPO
Reg. No. 4,355,218 registered January 28, 2000;
Reg. No. 4,504,596 registered September 7, 2001;
CIPO
Reg. No. 577,539 registered March 17, 2003; &
Reg. No. 592,409 registered October 16, 2003.
Previous panels have found that multiple trademark registrations demonstrate a complainant’s rights in a mark. See OpenTable, Inc. v. Web Brands, Inc., FA 1163837 (Nat. Arb. Forum Apr. 28, 2008) (holding that the complainant’s registration with CIPO, OHIM, and the JPO were adequate evidence of complainant’s rights). It has also been firmly established in past precedent that the existence of a trademark registration, and not the specific country where a mark is registered, is the important element in proving rights. 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). Accordingly, the present Panel determines that Complainant has rights in the mark under Policy ¶ 4(a)(i) as a result of its multiple trademark registrations around the world.
Complainant asserts that Respondent’s <etokenindia.com> domain name is confusingly similar to Complainant’s ETOKEN mark because the only differences between the two are the added geographic term “india” and the attached generic top-level domain (“gTLD”) “.com.” The addition of the term “india” was found irrelevant, and the domain name including it with the complainant’s mark was found confusingly similar, in Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006). Similarly, the panel in Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002), found that the <yveskorea.com> domain name was confusingly similar to the YVES ROCHER mark despite the addition of the geographic term “korea.” In Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel determined that gTLDs such as “.net” or “.com” do not affect the confusing similarity of a disputed domain name. In accord with these prior decisions, the Panel concludes that Respondent’s <etokenindia.com> domain name is confusingly similar to Complainant’s ETOKEN mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
The requirements of Policy ¶ 4(a)(i) dictate that Complainant must put forth a prima facie case before Respondent is saddled with the responsibility of proving its rights and legitimate interests. Although Complainant has satisfied its obligation in this proceeding, Respondent’s default has provided the Panel with no evidence or assertions countering Complainant’s allegations. As a result, the Panel infers that Respondent lacks all rights and legitimate interests in the disputed 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 the complainant’s allegations are true unless clearly contradicted by the evidence); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). Despite the initial negative inference, however, the Panel will continue with the analysis under Policy ¶ 4(c) to make a complete determination on the issue of Respondent’s rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <etokenindia.com> domain name and that no person or entity connected with Respondent is named or identified by the disputed domain name or ETOKEN mark. Complainant alleges that Respondent is not authorized to sell ETOKEN products, has not been granted any license or consent to use the mark, and has no connection with Complainant. The WHOIS information provides support for Complainant’s assertion as it lists the registrant as “Digital Signature Dept. / Shakambaree Traders Pvt Ltd,” which reveals no nominal connection between Respondent and the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), panels consistently held that, without corroborating WHOIS information or other relevant evidence refuting a complainant’s allegation, the respondent was not commonly known by the disputed domain name. The Panel here finds likewise, determining that Respondent does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent promotes and sells Complainant’s ETOKEN products at the <etokenindia.com> domain name without ever mentioning that such products are Complainant’s. Complainant asserts that the products offered at the disputed domain name are either counterfeit versions or unauthorized. Complainant argues that Respondent also displays Complainant’s ETOKEN mark on the resolving website, likely in order to deceive prospective customers into buying Complainant’s products from Respondent’s website. The Panel finds that using Complainant’s mark to sell Complainant’s goods without authorization does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Brainetics, LLC v. Gu TingTing, FA 1389739 (Nat. Arb. Forum June 28, 2011) (holding that respondent’s offering of complainant’s products for sale at the disputed domain name did not satisfy Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not make any specific arguments concerning ¶ 4(b)(iii) of the Policy. Complainant alleges, however, that Respondent uses the resolving website to promote unauthorized or counterfeit versions of Complainant’s products under Complainant’s mark without making any reference to Complainant. The Panel finds that selling Complainant’s products without Complainant’s authorization competes with Complainant’s own sale of its products and disrupts Complainant’s business by reducing its profits and potential sales. The Panel thus holds that this commercial activity represents bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant argues that Respondent uses a confusingly similar variation of Complainant’s ETOKEN mark as the <etokenindia.com> domain name and displays Complainant’s stylized mark on the resolving website in order to create confusion as to the sponsorship of Respondent’s website selling Complainant’s products. Complainant asserts that Respondent sells Complainant’s products without authorization and thus aims to increase its commercial gain by attracting and misleading Internet users who arrive at the resolving website while seeking Complainant. The Panel finds these activities indicate bad faith registration and use according to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etokenindia.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 17, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page