national arbitration forum

 

DECISION

 

Seagate Technology LLC v. Michael Kibler / TC Services

Claim Number: FA1203001432728

 

PARTIES

Complainant is Seagate Technology LLC (“Complainant”), represented by Richard Stockton of Banner & Witcoff, Ltd., Illinois, USA.  Respondent is Michael Kibler / TC Services (“Respondent”), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seagate.biz>, registered with eNom, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically March 2, 2012; the National Arbitration Forum received payment  March 2, 2012.

 

On March 5, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <seagate.biz> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and 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@seagate.biz.  Also on March 6, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 April 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 alleges in this proceeding:

1.    Complainant owns trademark registrations with the United States Patent and Trademark office (“USPTO”) for its SEAGATE mark (e.g., Reg. No. 1269032 registered March 6, 1984).

2.    Respondent registered the disputed domain name no earlier than 2001.

3.    The disputed domain name is identical to Complainant’s SEAGATE mark.

4.    Respondent has no rights or legitimate interest in the SEAGATE mark.

5.    Respondent is not commonly known by the disputed domain name.

6.    Respondent is using Complainant’s mark to display advertising, which is not a bona fide offering of goods or services or legitimate noncommercial fair use.

7.    Respondent has registered the disputed domain name in bad faith.

8.    Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website.

9.    Respondent is using the disputed domain name to redirect Internet users to a website featuring third-party links to websites that offer products and services that compete with Complainant.

10. Respondent had actual and constructive knowledge of Complainant’s mark.

 

B.   Respondent did not submit a response.

 

FINDINGS

 

1.    Complainant established rights in the mark contained within the disputed domain name.

2.    Respondent failed to show rights in the mark or domain name.

3.    Complainant established that the disputed domain name is identical to Complainant’s mark.

4.    Respondent failed to show rights to or legitimate interests in the mark or domain name.

5.    Complainant established that Respondent registered and used the disputed domain name in bad faith.

 

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."

 

Paragraph 4(a) of the Policy requires Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical to or Confusingly Similar

 

Complainant presents the Panel with evidence of its trademark registrations with the USPTO for its SEAGATE mark (e.g., Reg. No. 1,269,032 registered on March 6, 1984). Complainant also offered evidence of its trademark registration with the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 000656306 registered May 31, 1999); IPAustralia (e.g., Reg. No. 611,512 registered on Sept. 15, 1993); and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA298,508 registered on December 28, 1984). Based on this evidence the Panel finds that Complainant established rights in the SEAGATE mark pursuant to Policy ¶ 4(a)(i) through its multiple trademark registrations with trademark authorities, including the USPTO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); See also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant contends that Respondent’s disputed domain name is identical to Complainant’s SEAGATE mark. The Panel notes that the disputed domain name contains Complainant’s mark in its entirety with the addition of a generic top-level (“gTLD”) “.biz.” Based on prior UDRP cases holding that this addition does not sufficiently differentiate a disputed domain name from a mark, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s SEAGATE mark pursuant to Policy ¶4(a)(i). See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark).

 

Respondent makes no contentions relative to Policy ¶4(a)(i).

 

The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

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 such 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); 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 interest 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.”).

 

Complainant argues that Respondent lacks rights and legitimate interests in the <seagate.biz> domain name. Complainant asserts that Respondent is not authorized or licensed to use its SEAGATE mark. The Panel notes that Respondent does not provide any evidence that it is commonly known by the disputed domain name. Complainant further states that the WHOIS information, which lists the registrant as “Michael Kibler,” does not indicate that Respondent is commonly known by the disputed domain name. Based on the evidence submitted, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues that Respondent uses the disputed domain name to resolve to a website that provides links to competing and unrelated third-party websites. The Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing and unrelated products and services of third parties does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). 

 

Respondent makes no contentions with regards to Policy ¶4(a)(ii).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

 Registration and Use in Bad Faith

 

Complainant contends that the Respondent’s disputed domain name resolves to a website containing links to third-party websites directly competing with Complainant. Complainant further asserts that the displayed links advertising for Complainant’s competitors divert Internet users away from Complainant, thereby disrupting Complainant’s business. Based on this evidence, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing products and services disrupts Complainant’s business and thus constitutes bad faith registration and use under Policy 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant also argues that Respondent has shown bad faith registration and use under a Policy ¶4(b)(iv) analysis. Complainant alleges that Respondent has created a likelihood of confusion with Complainant’s mark through its confusingly similar domain name, thereby misleading Internet users and diverting Internet traffic to the resolving website for commercial gain. Respondent’s resolving website features links connecting Internet users to other sites competing with Complainant’s website. Complainant argues that the displayed links are pay-per-click links, which generate revenue for Respondent when clicked. Based on Complainant’s assertions and evidence, the Panel finds that Respondent acts in bad faith under Policy 4(b)(iv) by using the disputed domain name to attract consumers and financially profit by creating a likelihood of confusion with Complainant’s mark. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Lastly, Complainant contends that its trademark registration for the SEAGATE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant’s right in the mark. Previous panels have concluded the constructive notice is not sufficient to support a bad faith finding. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). The Panel finds, however, that the fame of Complainant’s mark, as well as the use that Respondent makes of the domain, supports an inference that Respondent had actual knowledge of the mark and Complainant’s rights in it. With such actual knowledge of the existence of Complainant and its rights in the SEAGAGE mark, then the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶4(b)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <seagate.biz> domain name  be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: April 19, 2012. 

 

 

 

 

 

 

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