Wyse Technology Inc. v. ICS INC.
Claim Number: FA1207001453395
Complainant is Wyse Technology Inc. (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wysepocketcloud.com>, registered with Tucows, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2012; the National Arbitration Forum received payment on July 19, 2012.
On July 16, 2012, Tucows, Inc confirmed by e-mail to the National Arbitration Forum that the <wysepocketcloud.com> domain name is registered with Tucows, Inc and that Respondent is the current registrant of the name. Tucows, Inc has verified that Respondent is bound by the Tucows, 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@wysepocketcloud.com. Also on July 19, 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 August 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant alleges:
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its WYSE and POCKETCLOUD marks.
2. Respondent’s <wysepocketcloud.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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.
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.”).
Complainant contends that its WYSE mark is associated with thin and zero client computing-based desktop virtualization software, computer hardware, and related services. Complainant alleges that its POCKETCLOUD mark is used in connection with a software application that allows a user to remotely connect to a desktop computer through the user’s mobile device. According to Complainant, Complainant owns trademark registrations with the USPTO for its WYSE (e.g., Reg. No. 1,461,695 registered October 20, 1987) and POCKETCLOUD marks (Reg. No. 3,901,501 registered January 4, 2011). See Complainant’s Exhibit E. Complainant asserts that it owns numerous trademark registrations throughout the world for its WYSE and POCKETCLOUD marks. See Complainant’s Exhibit E. However, the Panel notes that Complainant only provides trademark certificates for the USPTO. The Panel also note that Respondent does not reside or operate in the United States. Nevertheless, the Panel holds that Complainant’s USPTO trademark registrations are sufficient proof of Complainant’s rights in the WYSE and POCKETCLOUD marks under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims that Respondent’s <wysepocketcloud.com> domain name is identical and confusingly similar to Complainant’s WYSE and POCKETCLOUD marks. Complainant avers that the disputed domain name combines Complainant’s two marks with the generic top-level domain (“gTLD”) “.com.” The Panel finds that the combination of two of a complainant’s marks does not adequately distinguish a disputed domain name. See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding that the <glencoemcgrawhill.com> domain name is confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under Policy ¶ 4(a)(i)). The Panel determines that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel concludes that Respondent’s <wysepocketcloud.com> domain name is confusingly similar to Complainant’s WYSE and POCKETCLOUD marks pursuant to Policy ¶ 4(a)(i).
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 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 alleges that Respondent is not commonly known by the <wysepocketcloud.com> domain name. Complainant claims that Respondent is not affiliated with Complainant and is not licensed or permitted to use Complainant’s marks. The Panel notes that the WHOIS information lists “ICS INC.” as the registrant of the <wysepocketcloud.com> domain name. The Panel also notes that Respondent’s failure to respond ensures that Respondent did not present any evidence that it is commonly known by the disputed domain name. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the <wysepocketcloud.com> domain name under Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wysepocketcloud.com> domain name. Complainant contends that Respondent uses the <wysepocketcloud.com> domain name to host pay-per-click hyperlinks. See Complainant’s Exhibit B. Complainant claims that Respondent commercially benefits from these hyperlinks. The Panel notes that some of the listed hyperlinks are entitled “DOWNLOAD RDP INTEGRATION,” “REMOTE ACCESS SOFTWARE,” “REMOTE DESKTOP SHARING,” “HOSTED VIRTUAL DESKTOPS,” and “GET A THIN CLIENT DESKTOP.” Therefore, the Panel infers that the hyperlinks resolve to Complainant’s competitors. The Panel holds that Respondent’s use of the <wysepocketcloud.com> domain name to host competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent registered and uses the <wysepocketcloud.com> domain name for commercial gain by creating a likelihood of confusion with Complainant’s affiliation of the domain name. Complainant argues that Internet users searching for Complainant’s WYSE and POCKETCLOUD products may find Respondent’s website instead and be confused as to Complainant’s affiliation because the disputed domain name contains Complainant’s marks. Complainant contends that Respondent commercially benefits from the pay-per-click hyperlinks. The Panel agrees with Complainant and finds that Respondent is attempting to commercially benefit by creating Internet user confusion. The Panel holds that Respondent registered and uses the <wysepocketcloud.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Complainant claims that Respondent had constructive and actual knowledge of Complainant’s rights in the mark. Complainant alleges that its extensive trademark registrations ensure that Respondent had constructive knowledge of Complainant’s rights in the WYSE and POCKETCLOUD marks. The Panel notes that constructive notice is generally not sufficient evidence of bad faith registration. 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.”). However, Complainant also contends that Respondent had actual knowledge because Complainant’s WYSE and POCKETCLOUD products and services are very well-known. The Panel infers actual knowledge based off of Respondent’s combination of two of Complainant’s marks. The Panel determines that Respondent had actual knowledge of Complainant’s rights in the marks. The Panel concludes that Respondent registered and uses the <wysepocketcloud.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wysepocketcloud.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 27, 2012
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