Wyse Technology Inc. v. George Blesson
Claim Number: FA1109001408263
Complainant is Wyse Technology Inc. (“Complainant”), represented by Lynne M.J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is George Blesson (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searchwyse.com>, registered with 1&1 Internet AG.
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 September 20, 2011; the National Arbitration Forum received payment on September 27, 2011.
On September 22, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <searchwyse.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 September 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@searchwyse.com. Also on September 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 October 20, 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 <searchwyse.com> domain name is confusingly similar to Complainant’s WYSE mark.
2. Respondent does not have any rights or legitimate interests in the <searchwyse.com> domain name.
3. Respondent registered and used the <searchwyse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wyse Technology Inc., owns the WYSE mark which it uses in connection with goods and services relating to computers, computer hardware and peripherals, computer operating system software, and computer consulting services. Complainant has registered its WYSE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,461,695 registered October 20, 1987).
Respondent, George Blesson, registered the disputed domain name on April 28, 2011. The disputed domain name previously resolved to a website which displayed links to Complainant’s competitors. The <searchwyse.com> domain name currently resolves to an inactive website.
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 argues that it has rights in the WYSE mark. The WYSE mark (Reg. No. 1,461,695 registered October 20, 1987) was registered by Complainant with the USPTO. Therefore, the Panel finds that Complainant has rights in the WYSE for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that the <searchwyse.com> domain name is confusingly similar to its WYSE mark. Previous panels have found that the addition of generic terms to a Complainant’s mark in a disputed domain name is not sufficient to distinguish the domain name from the mark. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). Panels have also found that the addition of a generic top-level domain (“gTLD”) is irrelevant for a Policy ¶ 4(a)(i) consideration. See 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Respondent makes no other changes to the WYSE mark than the addition of the generic term “search” and the gTLD “.com,” and therefore the Panel finds that the <searchwyse.com> domain name is confusingly similar to Complainant’s WYSE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Panels consistently hold that once a complainant makes a prima facie case in support of its assertion the burden shifts to the respondent to rebut. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds the Complainant has made a prima facie case in support of its assertion. Therefore, the Panel, devoid of a response from Respondent, will infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”). The Panel will, however, review the record for information which suggests that Respondent does have rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <searchwyse.com> domain name. The Panel will look to the WHOIS record and any other available information to determine whether Respondent is commonly known by the disputed domain name. See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS record lists “George Blesson” as the registrant of the disputed domain name. The Panel finds that this is not at all reflective of the <searchwyse.com> domain name. Thus, the Panel finds that Respondent is not commonly known by the <searchwyse.com> domain name.
Complainant alleges that Respondent’s prior use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <searchwyse.com> domain name previously resolved to a website which displayed links to websites in competition with Complainant’s business. Therefore, the Panel finds that Respondent’s use of the disputed domain name was not within the protected uses under Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent’s current use of the disputed domain name is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <searchwyse.com> domain name currently resolves to an inactive website. Inactive websites have been found to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use by past panels in cases such as Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), and George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007). Therefore, the Panel finds that Respondent’s holding of an inactive website through the <searchwyse.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is met.
The <searchwyse.com> domain name previously resolved to a website which displayed links to competitors of Complainant under headings such as “Dell Managed Services,” “Search for Loads,” and “Bing Visual Search Engine.” Panels have held in such cases as Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), that the display of competing links on a disputed domain name demonstrates that the respondent registered and used the disputed domain name in order to disrupt the complainant’s business. Therefore, the Panel finds that Respondent’s display of links on the <searchwyse.com> domain name to websites which compete with Complainant’s business is evidence that Respondent registered and previously used the disputed domain name in order to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s previous use of the disputed domain name was to take commercial advantage of Internet users’ confusion. Past panels have found that the registration and use of a website which is confusingly similar to a complainant’s mark and which displays links to websites which compete with the complainant is evidence of bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Respondent’s <searchwyse.com> domain name is confusingly similar to Complaiant’s WYSE mark. Therefore, Internet users will become confused immediately upon searching for Complainant as to whether Complainant sponsors the <searchwyse.com> domain name. The <searchwyse.com> domain name previously resolved to a website which displayed links to complainant’s Competitors. Therefore, faced with links to similar services, the Internet users will believe that the disputed domain name is affiliated with Complainant. Given this assumption, the Internet users will likely click-through these links, an action for which the Panel infers that Respondent was compensated for. Therefore, the Panel finds that Respondent’s registration and prior use of the <searchwyse.com> domain name was done in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s registration and current use of the disputed domain name was done in bad faith. The <searchwyse.com> domain name presently resolves to an inactive website. The Panel finds that Respondent’s inactive use of the <searchwyse.com> domain name compels the Panel to find that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searchwyse.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 24, 2011
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