national arbitration forum

 

DECISION

 

Seagate Technology LLC v. Jatin Mistry

Claim Number: FA1210001469424

 

PARTIES

Complainant is Seagate Technology LLC (“Complainant”), represented by Richard Stockton of Banner & Witcoff, Ltd., Illinois, USA.  Respondent is Jatin Mistry (“Respondent”), India

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seagatewireless.com>, registered with CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2012; the National Arbitration Forum received payment on October 29, 2012.

 

On October 30, 2012, CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <seagatewireless.com> domain name is registered with CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names.  CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM 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 November 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@seagatewireless.com.  Also on November 1, 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 December 6, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant is a publicly traded corporation with more than 52,000 employees and more than $11 billion in annual revenues.  Complainant designs, manufactures, and markets wired and wireless electronic data storage devices under the SEAGATE brand name. 
    2. Complainant owns several trademark registrations around the world for its SEAGATE mark, including registrations with the following agencies:

                                        i.    United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,269,032 registered Mar. 6, 1984);

                                       ii.    European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 656306 registered May 31, 1999);

                                      iii.    IP Australia (“IPA”) (Reg. No. 611,512 registered May 25, 1995); and

                                     iv.    Canada’s Intellectual Property Office (“CIPO”) Reg. No. TMA298508 registered Dec. 28, 1984).

    1. Respondent’s <seagatewireless.com> domain name is confusingly similar to Complainant’s SEAGATE mark.  The addition of the generic suffix “wireless” does not mitigate the confusing similarity with Complainant’s mark.  The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant in evaluating the similarity between the disputed domain name and Complainant’s mark. 
    2. Respondent does not have rights or legitimate interests in the disputed domain name.

                                        i.    Nothing in the record indicates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the SEAGATE mark.

                                       ii.    Respondent’s disputed domain name is being used in connection with a website featuring links to advertising for Complainant’s products and the products of Complainant’s competitors.  See Complainant’s Exhibit 14.  Respondent presumably profits from such links through click-through referral fees or commissions. 

    1. The <seagatewireless.com> domain name has been registered and is being used in bad faith by Respondent.

                                        i.    Respondent’s redirection of Internet users to a website featuring third-party links to websites that offer products and services that compete with SEAGATE products and services constitutes a disruption to Complainant’s business under Policy ¶ 4(b)(iii). 

                                       ii.    Respondent’s use of the disputed domain name is to commercially profit from the links posted on the resolving website by intentionally attracting, for commercial gain, Internet users to the resolving website. 

                                      iii.    Respondent had actual and constructive knowledge of Complainant’s mark and rights therein, thus evidencing Respondent’s bad faith registration and use of the <seagatewireless.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.     Complainant has rights in its SEAGATE mark.

2.    Respondent’s <seagatewireless.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the 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 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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims that it is a publicly traded corporation with more than 52,000 employees and more than $11 billion in annual revenues.  Complainant asserts that it designs, manufactures, and markets wired and wireless electronic data storage devices under the SEAGATE brand name.  Further, Complainant argues that it owns several trademark registrations around the world for its SEAGATE mark, including registrations with the USPTO (e.g., Reg. No. 1,269,032 registered Mar. 6, 1984); OHIM (e.g., Reg. No. 656306 registered May 31, 1999); IPA (Reg. No. 611,512 registered May 25, 1995); and CIPO Reg. No. TMA298508 registered Dec. 28, 1984).  The Panel finds that Complainant’s trademark registrations with the trademark agencies above firmly establish Complainant’s Policy ¶ 4(a)(i) rights in the SEAGATE mark, regardless of Respondent’s purported location in India.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); 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).

 

As for the second prong of a Policy ¶ 4(a)(i) analysis, Complainant argues that Respondent’s <seagatewireless.com> domain name is confusingly similar to Complainant’s SEAGATE mark.  Complainant contends that the addition of the generic suffix “wireless” does not mitigate the confusing similarity with Complainant’s mark.  Further, Complainant asserts that the addition of the gTLD “.com” is irrelevant in evaluating the similarity between the disputed domain name and Complainant’s mark.  The Panel agrees with Complainant’s position regarding the confusing similarity of the <seagatewireless.com> domain name is confusingly similar to Complainant’s SEAGATE mark, and finds that the disputed domain name is indeed confusingly similar to the mark under Policy ¶ 4(a)(i).  See Disney Enters., Inc. v. Private Domain Registration, FA 1130797 (Nat. Arb. Forum Feb. 29, 2008) (finding that “Respondent’s <disneywireless.com> domain name is confusingly similar to [Complainant’s] DISNEY mark, as it includes the entire mark and merely adds the generic term “wireless” onto the mark” and that the added gTLD “.com is irrelevant.). 

 

Rights 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 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 does not have rights or legitimate interests in the disputed domain name.  Complainant first contends that nothing in the record indicates that Respondent is commonly known by the disputed domain name, and asserts that Complainant has not authorized Respondent to use the SEAGATE mark.  The Panel notes that the registrant of the <seagatewireless.com> domain name is identified within the public WHOIS as “Jatin Mistry,” which the Panel finds to be dissimilar to the disputed domain name.  Further, the Panel notes that Respondent has not come forward to advance the idea that it may be commonly known by the disputed domain name or to refute Complainant’s claims.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the available evidence in the record.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Second, Complainant argues that Respondent’s disputed domain name is being used in connection with a website featuring links to advertising for Complainant’s products and the products of Complainant’s competitors.  See Complainant’s Exhibit 14.  Complainant contends that Respondent presumably profits from such links through click-through referral fees or commissions.  The Panel notes that Respondent’s domain name states “Seagatewireless.Com Is Coming Soon,” features a search bar, and contains “topic” selections for “wireless,” “seagate,” “Laptop External Hard Drives,” “Free Cell Phones,” and others.  The Panel agrees with Complainant and finds that Respondent is not using the <seagatewireless.com> domain name for 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).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s redirection of Internet users to a website featuring third-party links to websites that offer products and services that compete with SEAGATE products and services constitutes a disruption to Complainant’s business under Policy ¶ 4(b)(iii).  As noted above, the Panel finds that Respondent’s disputed domain name currently resolves to a website featuring various third-party links, some of which appear to be in the same industry and for the same products that Complainant markets under the SEAGATE mark.  Therefore, the Panel finds that Respondent’s disputed domain name has been registered and is being used in bad faith under Policy ¶ 4(b)(iii).  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Further, Complainant argues that Respondent’s use of the disputed domain name is to commercially profit from the links posted on the resolving website by intentionally attracting, for commercial gain, Internet users to the resolving website.  Past UDRP panels have inferred commercial gain on the part of a respondent where the resolving website features no substantive content other than third-party links.  See 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).”).  The Panel finds that Respondent’s <seagatewireless.com> domain name creates a likelihood of confusion with Complainant’s SEAGATE mark for which Respondent presumably commercially gains, and that such use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). 

 

Lastly, Complainant contends that Respondent had actual and constructive knowledge of Complainant’s mark and rights therein, thus evidencing Respondent’s bad faith registration and use of the <seagatewireless.com> domain name.  Complainant cites its trademark holdings in providing Respondent with constructive notice of Complainant’s rights in the SEAGATE mark.  While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).

 

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 <seagatewireless.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 20, 2012

 

 

 

 

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