Dataprise, Inc. v. Syber Inc.
Claim Number: FA1110001412170
Complainant is Dataprise, Inc. (“Complainant”), represented by Kevin T. Oliveira of Odin, Feldman & Pittleman, P.C., Virginia, USA. Respondent is Syber Inc. (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dataprise.co>, registered with GoDaddy.com, Inc.
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.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2011; the National Arbitration Forum received payment on October 19, 2011.
On October 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dataprise.co> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 the Policy.
On October 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@dataprise.co. Also on October 20, 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.
A timely Response was received and determined to be complete on November 9, 2011.
On November 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a sixteen year old business engaged in the business, generally, of providing an array of services related to technology and information technology and to technology and information technology consulting and consulting.
Complainant is the owner of trademarks in DATAPRISE, including (a) DATAPRISE in standard characters, its logos, including (b) the logo containing the stylized word DATAPRISE, (c) DATAPRISE SIGNATURE NETWORK SUPPORT in standard characters and (d) in the domain name DATAPRISE.COM (the "Marks").
The Marks are the subject of the following U.S. Trademark Registrations:
U.S. Registration No. 3,188,497 filed December 10, 2004 and issued December 26, 2006;
U.S. Registration No. 2,243,324 filed February 18, 1997 and issued May 4, 1999;
U.S. Registration No. 2,884,098 filed January 3, 2003 and issued September 14,2004.
Complainant has used the domain name <dataprise.com> as the official website and home of its presence on the Internet since on or about February 1, 1997.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name consists of the top-level domain ".co" and the component "Dataprise" of the Marks. The generic top-level domain is not relevant in determining whether a domain name is confusingly similar to a trademark.
Respondent has no rights or legitimate interest with respect to the disputed domain name.
To date the Respondent has not used the disputed domain name for a bona fide offer of goods and services of the Complainant. In fact, the Respondent who appears to market itself as a competitor of Complainant has actually only used the disputed domain name for a competitive offer of goods and services of the Respondent to the exclusion of the goods and services of the Complainant.
Complainant, upon being made aware of the existence of the <dataprise.co> web site, had its counsel contact Respondent by letter of September 16, 2011 and therein requested transfer of the disputed domain name to Complainant. Therefore, more specifically with regard to the timing of the use of the disputed domain name, at a time before and just after the first contact by counsel for the Complainant to the Respondent on September 16, 2011, the disputed domain pointed or redirected to either the Respondent's content advertising the services and goods of the Respondent on the Respondent's servers or leased hosting servers. Only at a time soon after this first contact by counsel for the Complainant to the Respondent on September 16, 2011 and now continuing to the present time of the filing of this Complaint, has the disputed domain name now been pointed to a page parked at GoDaddy.com.
This parking only comes after, upon information and belief, a period of at least 14 months following the purchase of the disputed domain name by the Respondent when the domain continued to point to or redirect to either the Respondent's content advertising the services and goods of the Respondent on the Respondent's servers or leased hosting servers and directly positioned to compete with the goods and services of the Complainant.
Upon information and belief, Respondent has not been known by the domain name and has not acquired trademark or service mark rights in that domain name.
Respondent is not making any legitimate noncommercial use or fair use of the disputed domain name. In fact, Respondent, as alleged, has been using that domain name with intent for commercial gain to misleadingly divert consumers seeking Complainant by having the disputed domain name pointed or redirected to the Respondent's content advertising the services and goods of the Respondent on the Respondent's servers or leased hosting servers.
In addition, Respondent is also associated with three other domain registrations <ntiva.co>, <sysarc.co>, and <syber.co> identical or similar to the marks and names of Complainant's competitors Ntiva, SysArc and CIBER, none of which is being used for any bona fide offer of goods or services of those competitors.
The domain name subject has been registered and used in bad faith.
In addition to the fact that Respondent has been using the disputed domain name with intent for commercial gain to misleadingly divert consumers seeking Complainant by having the disputed domain name pointed or redirected to either the Respondent's content advertising the services and goods of the Respondent on the Respondent's servers or leased hosting servers, Respondent has also engaged in a pattern of similar conduct with organizations that Respondent considers as competitors and, as alleged, with organizations that are the Complainant's competitors.
In light of this context, a finding of bad faith is certainly required; however and moreover, a finding of bad faith is required when there is no plausible explanation for the registration of a domain name other than to trade on the goodwill of the Complainant.
Likewise, and further because of this context, it is clear bad faith is also found readily where a Complainant has unique trademarks and the possibility that a Respondent devised the domain names independently was remote.
Circumstances indicate that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.
Contact to the Respondent began in September 2011, through counsel for the Complainant, with regard to the domain name and conversations ensued in which the Respondent provided notice as of October 8, 2011 and thereafter that Respondent unquestionably considered the domain name as the Respondent's property. Contact was continued during a telephone conference of October 13, 2011 between Respondent and counsel for Complainant and during that telephone conference, Respondent had refused to consider transferring the domain name to the Complainant.
Subsequent to that telephone conference, on October 14, 2011, Respondent demanded $10,000 to transfer the disputed domain name; as a consequence, Respondent has now since offered that it was willing to transfer the domain name for monetary consideration. No documentation of the out-of-pocket costs of Respondent with respect to the domain name exists or has been provided.
B. Respondent
Respondent has acted in good faith and within the regulations of all governing bodies referencing the intent, operations and control of the disputed domain name.
Respondent purchased <dataprise.co> in an open and free market to be used within the guidelines, rules and regulations of the governing authorities to be ultimately used for a client project. The intent with the disputed domain name is to publish an auction site that is still being developed and if needed, will have the client sign an affidavit to that effect.
Respondent does not have an interest in selling <dataprise.co> but was solicited by counsel for Complainant for a selling price. Respondent responded that if Complainant was looking to purchase the domain name, Respondent would like Complainant to make an offer, and after further conversation with the attorney, Respondent provided a range that a sell may be considered.
Since the purchase of the disputed domain name, DNS settings were originally pointed to GoDaddy's servers and subsequent landing page, until a decision in early 2011 was made by Respondent to point all Respondent-controlled domains to <syber.com> which would serve as the holding/landing page for all domains until they are ready to be used for the respective project(s) or other originally intended purpose. As such, when Respondent was notified that there was concern of a possible trademark infringement or confusion being made to the public, Respondent immediately corrected the situation by directing the domain name to a different landing page, demonstrating that there was no intention to confuse the public.
In addition to the above findings, Respondent has found Complainant to have malicious intentions with their online behavior, although Respondent has not infringed on or shown any malicious intent toward Complainant. Let it be known that Complainant continues to challenge Google's advertising rules and guidelines for Google Adwords directly attacking Respondent. Currently Respondent is at least using the keyword "SYBER" to try and confuse the public that is searching for Respondent. This demonstrates a malicious intent to confuse the public searching for SYBER (a trademark of Respondent which is detailed in a pending U.S. trademark application for registration) also building a history of negative attacks in poor ethical standing against Respondent just like the lack of merit for this Complaint.
Admissibility
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
The Panel gives weight only to those admissible factual contentions that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under Paragraph 10(d) of the Rules.
In this case, Complainant has provided the required ¶ 3(b)(xiv) certification and additional documents and declarations. The Panel thus finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has failed to provide the required ¶ 5(b)(viii) certification or any other documents, affidavits, or declarations supporting its contentions (other than documents relating to Respondent's trademark SYBER). The Panel thus finds that none of the factual contentions made by Respondent are admissible.
Policy
Complainant has established trademark rights in the Marks. The disputed domain name is confusing similar to the Marks. Respondent has not established that it has legitimate rights to or interest in the disputed domain name. Respondent's adoption and use of the disputed domain name has been in bad faith.
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."
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.
The Panel finds that Complainant's U.S. Trademark Registration Nos. 2,243,324, 3,188,497, and 2,884,098 establish Complainant’s rights in the Marks. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).
The Panel also finds that the domain name at issue is confusingly similar to the Mark. The addition of the generic ccTLD “.co” is not a sufficient modification. See Sensient Techs. Corp. v. Kolcak, FA 1355265 (Nat. Arb. Forum Nov. 22, 2010) (“The Panel finds that attaching the ccTLD “.co” does nothing to prevent the <sensient.co> domain name from being identical to Complainant’s SENSIENT mark.”); see also Life Extension Foundation, Inc. v. Green, FA 1370517 (Nat. Arb. Forum Mar. 8, 2011) (finding the disputed domain name identical to the mark despite the addition of the ccTLD “.co).
The Panel finds that Complainant has carried its burden of proof under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
The Panel finds that Complainant has made such a prima facie showing.
The Marks have been registered for various services that Complainant generally characterizes as services related to technology and information technology and technology and information technology consulting and consulting. The Panel finds that characterization to be overbroad and obtuse. Common to all of Complainant's trademark registrations are "computer network and software consulting services." These services will be taken by the Panel to be the core of Complainant's business.
Respondent's initial use of the disputed domain name (according to Complainant) "pointed or redirected to either the Respondent's content advertising the services and goods of the Respondent on the Respondent's servers or leased hosting servers." Respondent's subsequent use of the disputed domain name (after notice from Complainant's counsel) has been for a web page providing sponsored links to a variety of web sites such as "IT Help Desk Software, "Small Business IT Support," and "On-Site PC, LAN & Network Support...” These services are within the scope of Complainant's core business.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has made no attempt to establish the circumstances of ¶ 4(c)(ii). And the Respondent admits that its acquisition of the disputed domain name was for a client who intended to use that domain name in the development of an auction site, a use which is commercial and thus not within the purview of ¶ 4(c)(iii).
Was that purpose bona fide? Respondent has provided no admissible evidence in support of its "auction site" business purpose. Rather, Respondent's own submission of its pending U.S. trademark application for registration of SYBER states that it intends to use that mark (identical to its business name) for a very wide variety of IT related services including "technical consulting and assistance with computer-based information systems and components."
The Panel also finds that hosting a listing of pay-per-click links at the disputed domain name is not consistent with Policy ¶ 4(c)(i) and ¶ 4(c)(iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds that Complainant has carried its burden of proof under Policy ¶ 4(a)(ii).
The circumstances of Paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy ¶ 4(a)(iii) can be established.
Paragraph 4(b) reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy ¶ 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.
Lack of rights or legitimate interests under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
Proof of Policy ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
After Complainant complained to Respondent about the disputed domain name, Respondent demanded $10,000 to transfer that domain name to Complainant. Respondent has not documented its out-of-pocket costs relating to the disputed domain name. Respondent’s offer also indicates that it registered the disputed domain name for the purpose of selling it (to someone identified only as a "client" or to Complainant). The Panel finds that this offer to sell the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
According to Complainant, Respondent previously used the disputed domain name to host its own website promoting Respondent’s own services. After notice from Complainant, Respondent changed the use of the disputed domain name to a parking page displaying a variety of pay-per-click links. Complainant contends that, in either case, Respondent is intentionally attempting to take advantage of the fame of Complainant’s mark in order to attract Internet users to Respondent’s resolving website and create confusion regarding the relationship between Complainant and Respondent. Complainant asserts that Respondent acts in this way to commercially profit, either through the prior promotion of its own services or through the click-through fees currently generated. The Panel agrees. As a result, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); 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 that Complainant has carried its burden of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dataprise.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: November 30. 2011
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