Netgear, Inc. v. Private
Claim Number: FA1203001432532
Complainant is Netgear, Inc. (“Complainant”), represented by Nathan E. Ferguson of Wilson Sonsini Goodrich & Rosati, Washington, USA. Respondent is Private (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netgearsolutions.com>, registered with Godaddy.com, Llc.
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.
Dr. Reinhard Schanda, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 2, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <netgearsolutions.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 March 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@netgearsolutions.com. Also on March 6, 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.
A timely Response was received and determined to be complete on March 27, 2012.
Complainant’s Additional Submission was received on April 2, 2012 and deemed compliant with Supplemental Rule 7.
On April 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges:
B. Respondent
Respondent alleges:
a. Respondent does not compete with Complainant because Respondent provides computer services and Complainant provides computer products.
b. Respondent registered the <netgearsolutions.com> domain name 12 years ago and has continuously used the domain name for its business.
c. Respondent is making a legitimate use of the disputed domain name and did not register or use the domain name in bad faith.
C. Additional Submissions
Complainant alleges in its Additional Submission:
a. The party that responded to the case is not the correct Respondent and did not provide evidence that the party is Respondent.
b. The Response was not transmitted to Complainant by Respondent.
c. The Response did not contain a signature.
d. Respondent is not commonly known by the <netgearsolutions.com> domain name.
e. Respondent registered the <netgearsolutions.com> domain name after Complainant began using the NETGEAR mark and after the mark was well-known.
f. Respondent does compete with Complainant because Complainant also offers computer services.
g. Respondent’s registration and use of the <netgearsolutions.com> domain name disrupts Complainant’s business.
The Panel finds that:
1. the Domain Name <netgearsolutions.com> is confusingly similar to Complainant’s registered trademarks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <netgearsolutions.com> and
3. the Respondent has registered and is using the Domain Name <netgearsolutions.com> in bad faith.
Preliminary Issue: Deficient Response
Although Respondent has provided a Response that was deficient because a hard copy of the Response was not received before the Response deadline, the Panel may decide to consider Respondent’s submission. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Likewise the Panel has chosen to consider Respondent’s Submission.
Preliminary Issue: Respondent’s Identity
Complainant alleges, in its Additional Submission, that the party that responded to the case is “Ilamparidhi Natarajan ‘Pari,’” which differs from the named Respondent “Private.” Complainant argues that the party that responded did not provide evidence that it is Respondent. Therefore, Complainant asks the Panel to disregard the arguments from the “Response.” The Panel determines that “Ilamparidhi Natarajan ‘Pari’” is the correct Respondent.
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.
Complainant alleges that it sells computer hardware and software products and services under its NETGEAR mark. Complainant claims it holds multiple trademark registrations with the USPTO for its NETGEAR mark (e.g., Reg. No. 2,124,219 registered December 23, 1997). Previous panels have held that a trademark registration with a national trademark authority is sufficient to establish rights in a complainant’s mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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)). Thus, the Panel concludes that Complainant owns rights in its NETGEAR mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <netgearsolutions.com> domain name is confusingly similar to its NETGEAR mark. The Panel notes that the disputed domain name contains Complainant’s NETGEAR mark, the descriptive term “solutions,” and the generic top-level domain (“gTLD”) “.com.” Past panels have held that the addition of a descriptive term and a gTLD both fail to remove a disputed domain name from the realm of confusing similarity. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel holds also in this case that Respondent’s <netgearsolutions.com> domain name is confusingly similar to Complainant’s NETGEAR mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make 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.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is not commonly known by the <netgearsolutions.com> domain name. Complainant alleges that it never licensed or otherwise permitted Respondent to use its NETGEAR mark. Complainant argues that Respondent does not own a trademark registration for the <netgearsolutions.com> domain name and is not incorporated in California or Delaware under the disputed domain name. In Complainant’s Additional Submission, Complainant argues that Respondent failed to present any evidence in support of Respondent’s assertion that it has been operating under the disputed domain name for 12 years and has established goodwill in the disputed domain name. Complainant provides the Panel with the WHOIS information, which lists “Private” as the registrant of disputed domain name, and avers that the WHOIS information contains no evidence that Respondent is commonly known by the disputed domain name. In similar situations, past panels have found that a respondent is not commonly known by the disputed domain name based on the WHOIS information and the evidence in the record. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Consequently, the Panel holds that Respondent is not commonly known by the <netgearsolutions.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s <netgearsolutions.com> domain name resolves to a competing website at which Respondent offers competing computer services. Prior panels have found that the use of a confusingly similar domain name for the operation of a competing website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also 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.”). The Panel agrees and finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <netgearsolutions.com> domain name.
In Complainant’s Additional Submission, Complainant alleges that Respondent disrupts Complainant’s business by offering competing computer services at the resolving website. Complainant contends that Respondent is a direct competitor of Complainant. Prior panels have found that the registration and use of a confusingly similar disputed domain name for the purpose of offering a competing website is evidence of bad faith registration and use. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Thus, the Panel holds that Respondent registered and uses the <netgearsolutions.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent is attempting to commercially benefit from the goodwill Complainant established in its NETGEAR mark. Complainant avers that Respondent offers competing computer services at the website resolving from the <netgearsolutions.com> domain name. Complainant contends that Respondent’s attempt to profit from its registration and use of the <netgearsolutions.com> domain name is evidence of Respondent’s bad faith registration and use. Previous panels have determined that a respondent’s competing use is evidence of bad faith registration and use because the respondent is attempting to commercially benefit from the likelihood that Internet users become confused as to Complainant’s affiliation with the disputed domain name. 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). Since the Panel determines that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the domain name, the Panel holds that Respondent registered and uses the <netgearsolutions.com> domain name in bad faith under Policy ¶ 4(b)(iv).
In both the Complaint and Complainant’s Additional Submission, 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 NETGEAR mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) since Respondent is found to have had actual notice of Complainant’s trademark rights. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netgearsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: April 23, 2012
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