Teradata US, Inc. v. None / Darryl McDonald
Claim Number: FA1110001411798
Complainant is Teradata US, Inc. (“Complainant”), represented by Val Dietrich of Teradata US, Inc., California, USA. Respondent is None / Darryl McDonald (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teradatamanuals.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2011; the National Arbitration Forum received payment on October 18, 2011.
On October 19, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <teradatamanuals.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 October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@teradatamanuals.com. Also on October 19, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 that was cognizable under either the ICANN Rules or the National Arbitration Forum’s Supplemental Rules, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Respondent replied to the Complaint by an email dated October 21, 2011, which merely asked how Respondent could comply with Complainant’s concerns. A second email dated November 15, 2011 informed the National Arbitration Forum that the subject domain name <teradatamanuals.com> had been disabled. These communications did not conform to any procedural requirements as set forth in the ICANN Rules, and were not considered by the Panel.
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 cognizable response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <teradatamanuals.com> domain name is confusingly similar to Complainant’s TERADATA mark.
2. Respondent does not have any rights or legitimate interests in the <teradatamanuals.com> domain name.
3. Respondent registered and used the <teradatamanuals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Teradata US, Inc., designs, markets, and sells database software, enterprise data warehousing, data warehouse appliances, and business information analytics. Complainant offers all of these products and services under its TERADATA mark. Complainant provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the Canadian Intellectual Property Office (“CIPO”):
Trademark Agency Reg. No. Registration Date
USPTO 1,461,689 October 20, 1987
USPTO 3,551,700 December 23, 2008
UKIPO 1,444,936 May 13, 1994
CIPO 1,107,391 May 10, 2004
Respondent, None / Darryl McDonald, registered the <teradatamanuals.com> domain name on May 31, 2011. The disputed domain name resolves to a website that offers outdated manuals for Complainant’s products and contains advertisements both related and unrelated to Complainant’s business.
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.
In support of Complainant’s argument that it owns rights in the TERADATA mark, Complainant provides evidence of trademark registrations with the USPTO, UKIPO, and CIPO:
Trademark Agency Reg. No. Registration Date
USPTO 1,461,689 October 20, 1987
USPTO 3,551,700 December 23, 2008
UKIPO 1,444,936 May 13, 1994
CIPO 1,107,391 May 10, 2004
Based on this evidence, the Panel concludes that Complainant has established rights in its TERADATA mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <teradatamanuals.com> domain name is confusingly similar to Complainant’s TERADATA mark. The disputed domain name contains Complainant’s entire mark and attaches the generic term “manuals” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. As the Panel finds that these changes do not adequately distinguish the disputed domain name, the Panel holds that Respondent’s <teradatamanuals.com> domain name is confusingly similar to Complainant’s TERADATA mark under Policy ¶ 4(a)(i). 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 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).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <teradatamanuals.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant asserts that Respondent is not commonly known by the <teradatamanuals.com> domain name. In support of this assertion, Complainant references the WHOIS information, which identifies the domain name registrant as “None / Darryl McDonald,” and claims that Respondent is not affiliated with Complainant and is not authorized to use Complainant’s TERADATA mark. Without Respondent providing any evidence contradicting the evidence in the record, the Panel must find that Respondent is not commonly known by the <teradatamanuals.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <teradatamanuals.com> domain name. Complainant alleges that Respondent provides outdated manuals on the resolving website in order to pass itself off as Complainant and to profit from the advertisements also found on the website. Complainant asserts that these advertisements are for third parties that are both related and unrelated to Complainant’s business. As the Panel determines that Complainant’s allegations are accurate, the Panel concludes that Respondent is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <teradatamanuals.com> domain name under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); 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 deems Policy ¶ 4(a)(ii) satisfied.
Complainant alleges that some of the advertisements found on the disputed domain name’s website resolve to Complainant’s competitors and disrupt Complainant’s business. Complainant argues that this is evidence of bad faith registration and use. The Panel agrees with Complainant and holds that Respondent registered and uses the <teradatamanuals.com> domain name in bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is attempting to create confusion as to Complainant’s affiliation with the <teradatamanuals.com> domain name by offering Complainant’s manuals at the resolving website. Complainant claims that Respondent commercially profits from this confusion by receiving click-through revenues from the advertisements also found on the websites. The Panel finds that Respondent does likely commercially benefit from the resolving website and that this fact, coupled with the offering of Complainant’s manuals and the registration of the confusingly similar domain name, is evidence that Respondent registered and uses the <teradatamanuals.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant argues that Respondent is attempting to pass itself off as Complainant by providing outdated manuals for Complainant’s products. The Panel agrees with Complainant’s argument and, therefore, finds further evidence of bad faith registration and use of the <teradatamanuals.com> domain name under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the TERADATA mark. Based on the fact that Respondent uses the <teradatamanuals.com> domain name to offer Complainant’s outdated manuals, the Panel concludes that Respondent had actual notice of Complainant’s mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel finds that Respondent’s actual notice of the mark is evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel deems Policy ¶ 4(a)(iii) 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 <teradatamanuals.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 23, 2011
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