SoftLayer Technologies, Inc. v. UltimatumHost.com / Rodrigo Martins
Claim Number: FA1202001429575
Complainant is SoftLayer Technologies, Inc. (“Complainant”), represented by M. Brenk Johnson of SoftLayer Technologies, Inc., Texas, USA. Respondent is UltimatumHost.com / Rodrigo Martins (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <corporatelayer.com>, registered with Enom, Inc.
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 February 14, 2012; the National Arbitration Forum received payment on February 14, 2012.
On February 16, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <corporatelayer.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@corporatelayer.com. Also on February 23, 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 22, 2012, 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 <corporatelayer.com> domain name, the domain name at issue, is confusingly similar to Complainant’s SOFTLAYER and other “LAYER” marks (the “Marks”).
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an application service provider (ASP), providing services including hosting of computer software applications for others; hosting websites of others on the Internet; computer software applications deployment for others on the Internet; and registration and tracking of domain names. Complainant has been using the mark “SoftLayer” since at least June 2005 in providing the
aforementioned services also uses a number of other trademarks
which continue the “Layer” theme (collectively, the “Marks”). Complainant has obtained the following trademark registrations from the U.S. Patent and Trademark Office for the Marks:
Trademark Registration No. Date Granted
StorageLayer 3,707,814 November 10, 2009
RescueLayer 3,714,238 November 24, 2009
SoftLayer (design mark) 3,714,244 November 24, 2009
KnowledgeLayer 3,714,246 November 24, 2009
CDNLayer 3,717,634 December 1, 2009
SoftLayer (word mark) 3,733,335 January 5, 2010
CloudLayer 3,924,553 March 1, 2011
SecurityLayer 4,029,647 September 20, 2011
Respondent registered the <corporatelayer.com> domain name on May 20, 2010 and Complainant asserts that Respondent is offering services identical to those offered by Complainant at the website associated with that domain name. Despite Complainant’s claim that the domain name is confusingly similar to a trademark in which it has rights of exclusivity, the Panel is not convinced that the embrace of the Marks is great enough to trump all subsequently registered domains containing the word “layer” in association with another word in the domain name. The Panel finds that the domain name at issue is not confusingly similar to any of the Marks owned and registered by Complainant. While Complainant obviously has protectable rights and interests in STORAGELAYER and the other Marks, those rights and interests are not protectable vis-à-vis a domain name which is not confusingly similar.
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.
(4) 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.”).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <corporatelayer.com> domain name be REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: March 22, 2012
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