national arbitration forum

 

DECISION

 

SoftLayer Technologies, Inc. v. Fahad Nadeem

Claim Number: FA1202001428541

 

PARTIES

Complainant is SoftLayer Technologies, Inc. (“Complainant”), represented by M. Brenk Johnson of SoftLayer Technologies, Inc., Texas, USA.  Respondent is Fahad Nadeem (“Respondent”), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thesoftlayer.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 7, 2012.

 

On February 8, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thesoftlayer.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 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@thesoftlayer.com.  Also on February 9, 2012, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <thesoftlayer.com> domain name is confusingly similar to Complainant’s SOFT LAYER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <thesoftlayer.com> domain name.

 

3.    Respondent registered and used the <thesoftlayer.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, SoftLayer Technologies, Inc., owns multiple federal trademark registrations for the SOFTLAYER mark issued by the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,244 registered November 24, 2009).  Complainant uses the mark as its business name, as well as its brand name in the hosting and software applications industry. 

 

Respondent, Fahad Nadeem, registered the disputed domain name on July 25, 2011.  The disputed domain name resolves to a website offering services that directly compete with Complainant’s own product offerings.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that its registrations for the SOFTLAYER mark issued by the USPTO (e.g., Reg. No. 3,714,244 registered November 24, 2009) establish its rights in the mark.  Registration of a mark with a federal agency such as the USPTO establishes right in a mark within the meaning of Policy ¶ 4(a)(i).  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Therefore, the Panel finds that Complainant has established its rights in the SOFTLAYER mark under Policy ¶ 4(a)(i) by registering with the USPTO.

 

Complainant also claims that Respondent’s disputed domain name is confusingly similar to its SOFTLAYER mark.  The <thesoftlayer.com> domain name includes the entire mark, while adding the generic top-level domain “.com” and the generic term “the.”  The Panel finds the differences between Respondent’s domain name and Complainant’s SOFTLAYER mark fail to remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i).  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 AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).

 

Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has successfully shifted the burden of proof under this provision to Respondent by making a prima facie case that outlines Respondent’s lack of rights in the disputed domain.  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.”).  Because Respondent failed to file a response in this matter the Panel may assume that it lacks rights or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will make no such assumptions, but will instead analyze the entire record under Policy ¶ 4(c) prior to making a determination regarding Respondent’s rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent is not commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the domain as “Fahad Nadeem.”  The Panel notes that there is no evidence in the record to contradict Complainant’s allegations.  Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and the lack of contradictory evidence in the record.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  The disputed domain name resolves to a website where Respondent offers products and services that directly compete with Complainant’s hosting and software applications business.  The Panel finds that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).    

 

Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the disputed domain name for the sole purpose of diverting customers to its own website and gaining commercially.  The disputed domain name resolves to Respondent’s commercial website that offers products and services very similar to those offered by Complainant.  Respondent presumably charges Internet users diverted to its website when they purchase its competing hosting and software applications online.  Thus, the Panel concludes that Respondent’s activity in this case demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent registered the domain to confuse Internet users and then profit off of that confusion.  See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <thesoftlayer.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 19, 2012

 

 

 

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