SAS Institute Inc. v. randall matignon (1147459694)
Claim Number: FA1112001421515
Complainant is SAS Institute Inc. (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is randall matignon (1147459694) (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasenterpriseminer.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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2011; the National Arbitration Forum received payment on December 27, 2011.
On December 29, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <sasenterpriseminer.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 December 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2012 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@sasenterpriseminer.com. Also on December 30, 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 January 13, 2012.
On January 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that he has used the trademark SAS and the trade name SAS INSTITUTE since at least as early as 1976, being an owner of numerous federal Trademark Registrations, in addition to registrations outside the United States, for the trade mark SAS for computer software (class 9), computer training manuals (class 16) for educational services, conducting seminars in computer training (class 41), and for other related software and communications tools.
Complainant further contends that it has used the trademark ENTERPRISE MINER since at least as early as 1998 for one of its software products.
Complainant’s products and services are advertised over the Internet via web sites hosted at SAS.COM and SASINSTITUTE.COM. Complainant has been operating the website SAS.COM for twenty years, and the website SASINSTITUTE for eleven years.
Complainant further contends that Respondent registered his domain on or about February 28, 2006. The domain name takes users to Respondent’s website, which promotes the sale of two books by Randall Matignon about the use of Complainant’s ENTERPRISE MINER product.
Complainant further contends that it has not consented to Respondent’s use of the Domain Name and that neither Respondent nor its business are known by the name “SAS” or “Enterprise Miner”.
Complainant further alleges that Respondent operates a web site at SASENTERPRISEMINER.COM seeking to generate revenue from the sale of books about Complainant’s ENTERPRISE MINER software product.. Respondent’s books are directly competitive with books published by Complainant and sold via Complainant’s own website.
Based on these contentions, Complainant alleges that:
a. Respondent’s registered domain name is confusingly similar to the Complainant’s SAS Marks and Complainant’s ENTERPRISE MINER mark;
b. Respondent has no rights or legitimate interests in its registered domain name.
c. Respondent registered and uses its domain in bad faith.
B. Respondent
In response to Complainant’s contention on the intent to divert users seeking information about products and services, Respondent states that his books are based on an older version of SAS Enterprise Miner Software and not on the current SAS Enterprise Miner software that SAS Institute promotes.
Respondent further contends that an increased traffic to his website was in fact achieved by acquiring a search engine optimization software called “SEO Elite” by Bryxem software.
Respondent further contends that the SAS trademark label does not appear anywhere in his website and that his initial website page clearly informs the users of the two separate data mining using SAS Enterprise Miner books he has written.
In response to factual and legal allegations made in Complaint, Respondent notes the following.
As regards confusing similarity between Complaint’s trademarks and the domain name in dispute, Respondent contends that he has identified numerous websites in which there are similarities in the domain name of “.COM” with companies that are not associated with the SAS Institute or the SAS software product..
To rebut Complainant’s contention that Respondent has no right or legitimate interests in the domain name, Respondent contends that on February 21, 2006 the disputed domain name was available for fair use to the public or anyone who has designed a website. The website was created after the completion and publication of his second book titled “Data Mining Using SAS Enterprise Miner”.
Further, Respondent contends that he did not register the disputed domain name with the attempt to gain profit as his website is based on an older version of SAS Enterprise Miner v4 and an older version of the SAS software product. Furthermore, SAS Enterprise Miner v4 is not advertised by SAS publications. In view of this, Respondent contends that his website does not distract or obstruct the commercial gain of the current Enterprise Miner products that are available for sale through Complainant’s SAS publications.
Respondent further states that he carefully chose the disputed domain name in good faith to best represent the content of the website and that the intent of his website is to educate and broaden the knowledge of the public in getting familiar with data mining using the SAS Enterprise Miner v4 software. Respondent further contends that his website was designed to make it easy for people to learn data mining using the SAS Enterprise Miner v4 software.
Complainant established that it holds rights deriving from U.S. Trademark Registration No. 1,132,122 for the trademark “SAS” registered for the goods of class 9 (prerecorded computer programs) on April 1, 1980; Registration No. 2,484,944 for the service mark “SAS” registered for the services of class 36 (consulting and analysis services in the fields of finance and risk analysis) on September 4, 2001; Registration No. 2,593,712 for the service mark “SAS” registered for the services of class 42 (computer consultation; computer programming for others; computer system analysis; computer services, namely, collection, analysis, management and presentation of data and information for others; providing temporary use of online nondownloadable software for data collection, analysis, and reporting; maintenance of computer software; computer graphics design; designing and hosting the web sites of others on a computer server for an internal or global computer network) on July 16, 2002; Registration no. 2,657,842 for the service mark “SAS” registered for the services of class 35 (business consultation and advisory services in the field of computer software and information technology regarding the collection, analysis, storage, management and presentation of business data and information; business modelling services, namely, providing models for business to improve practices; software licensing) on December 10, 2002; registration no. 2,687,081 registered for the service mark “SAS” registered for the services of class 38 (communications and broadcast services, namely, providing telecommunications connections to a global computer network for transmission, receipt and exchange of, access to and electronic display of computer programs, text, sound. Images and other data and information) on February 11, 2003; Registration no. 2,583,378 for the trademark “SAS COM” registered for the goods in class 16 (publications, namely magazines, in the fields of computer software and hardware, computing and information services and related business methodologies) on June 18, 2002.
The evidence on the record show that Complainant registered its domain name “SAS.COM” on March 2, 1990 and the domain name “SASINSTITUTE.COM” on April 5, 1999.
Further evidence on the record shows that Respondent registered his domain name subject to this dispute on February 26, 2006 (the domain name registrant is listed as “randall matignon”) and that this domain name takes users to the Respondent’s website which promotes the sale of two books by Randall Matignon about the use of Complainant’s ENTERPRISE MINER product.
Respondent does not deny that he uses the Complainant’s trademarks in his domain name. The Respondent’s website promotes the sale of two books by Randall Matignon about the use of Complainant’s older version of the ENTERPRISE MINER product (v4).
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.
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, Complainant provides evidence of its ownership of several registrations through the United States Patent and Trademark Office (“USPTO”) for the SAS mark (e.g., Reg. No. 1,132,122 registered April 1, 1980). Panels have held that the registration of a mark with a federal trademark authority is sufficient to demonstrate rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the SAS mark pursuant to Policy ¶ 4(a)(i).
As to the second question the disputed domain name <sasenterpriseminer.com> incorporates the Complainant’s mark "SAS", which is also a part of the Complainant’s trade name, the descriptive terms “enterprise” and “miner” , and the generic top-level domain reference ".com". As a rule, when a domain name wholly incorporates a Complainant’s mark and adds a generic word, or a geographical identifier, that is sufficient to establish confusing similarity for purposes of the Policy. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367, CMGI, Inc. v. Reyes, WIPO Case No. D2000-0572). See also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Thus, the Panel finds that Respondent’s changes to the SAS mark in the <sasenterpriseminer.com> domain name are insufficient, and therefore the <sasenterpriseminer.com> domain name is confusingly similar to the SAS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). ), and thus 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that it has not consented to Respondent’s use of the SAS mark in a domain name and that neither Respondent nor Respondent’s business is known by the name “SAS” or “Enterprise Miner.” According to the WHOIS record submitted as exhibit 4, the domain name registrant for the <sasenterpriseminer.com> domain name is listed as “randall matignon (1147459694).” Panels have found in the past that a complainant’s allegations along with the WHOIS record often is determinative of whether a respondent is commonly known by a 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).
In view of this, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The <sasenterpriseminer.com> domain name resolves to Respondent’s website from which Respondent sells copies of books it published about Complainant’s Enterprise Miner product. Even though the subject of these books is an older version of the Complainant’s product, the fact that Complainant publishes its own manuals on its products gives grounds to contend that these books compete with the books about the product that Complainant sells. Respectively, such use is not a use which gives the respondent rights or legitimate interests. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) and also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002), the Panels held that the use of a disputed domain name to operate business activities which compete with the complainant’s business is not a use which gives the respondent rights or legitimate interests. Therefore, the Panel finds that Respondent’s use of the sasenterpriseminer.com> domain name to sell books which compete with the products Complainant provides is neither a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Having established that the sasenterpriseminer.com> domain name resolves to Respondent’s website, which offers for sale books written by Respondent about Complainant’s products competing with the books Complainant produces and sells regarding its products, the Panel finds that the registration and use of the disputed domain name to operate a competing business is disruptive to Complainant’s business conducted under the SAS mark pursuant to Policy 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Furthermore, the nature of the disputed domain name, particularly incorporation of the trademark which also forms a part of the trade name which has been in use as of the date of Complainant’s foundation, and the content on the resolving website will cause confusion for Internet users as to the source of the sasenterpriseminer.com> domain name. Therefore, the Panel finds that by taking commercial advantage of Internet users’ mistakes about the source, sponsorship, or affiliation of the sasenterpriseminer.com> domain name Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sasenterpriseminer.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: February 6, 2012
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