MySQL AB v. Mumbai Domains Pvt. Ltd. / Registration Manager
Claim Number: FA1308001514027
Complainant is MySQL AB (“Complainant”), represented by Nadya Bosch of Holland & Hart LLP, Colorado, USA. Respondent is Mumbai Domains Pvt. Ltd. / Registration Manager (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysqlguru.com>, registered with Name.com LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2013; the National Arbitration Forum received payment on August 9, 2013.
On August 9, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <mysqlguru.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 August 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2013 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@mysqlguru.com. Also on August 21, 2013, 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 September 10, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on September 15, 2013.
On September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complaint:
a) Complainant is the owner of the mark MYSQL which it uses in connection with database software, management, development, and related services. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the MYSQL mark (e.g., Reg. No. 2,792,127 filed July 6, 2001; registered Jun. 25, 2009).
b) The <mysqlguru.com> domain name is merely constructed of Complainant’s mark, the generic term “guru,” and the generic top-level domain (“gTLD”) “.com.”
c) Respondent has never been associated or affiliated with Complainant, and Respondent has never been authorized to use the MYSQL mark.
d) Respondent purports to offer competing consulting, support, and training for MYSQL products and services at the <mysqlguru.com> domain name’s resolving website. Respondent’s use of Complainant’s mark in the disputed domain name to offer competitive services for Respondent’s own benefit does not constitute a bona fide offering of goods or services and is not a legitimate noncommercial or fair use.
e) Respondent’s use of Complainant’s mark in the <mysqlguru.com> domain name, without authorization, to offer competitive services for Respondent’s own benefit and to confuse Internet users as to Respondent’s affiliation with Complainant constitutes bad faith.
f) Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the MYSQL mark. Complainant had at least 73 registrations for the MYSQL mark around the world when the <mysqlguru.com> domain name was registered, thus putting Respondent on constructive notice. The disputed domain name’s resolving website states that it is operated by “a team of former MySQL / Sun Microsystems deployment engineers.” Sun Microsystems, Inc. is Complainant’s immediate predecessor to the MYSQL business, and thus Respondent has essentially admitted to having actual knowledge of the MYSQL mark at the time the <mysqlguru.com> domain name was registered.
Response:
a) Respondent teaches various “MySQL” and “LAMP” classes in India, and registered the <mysqlguru.com> domain name in 2008. The disputed domain name is based on a Hindi phrase “Tu To MySQL Guru hai bhai,” loosely translated to mean “You are a MySQL Guru brother.”
b) Respondent’s purpose has always been to educate students on how to utilize MySQL in its ultimate form. Such services are not available from Complainant’s business, which would make it impossible for Respondent to compete with Complainant.
c) Complainant should have filed the dispute in November 2012 instead of harassing and threatening Respondent.
d) Respondent met with the co-founder of Complainant’s business at a conference, where he encouraged Respondent to “keep up the good work,” and made no mention of infringement.
e) The <mysqlguru.com> domain name is not confusingly similar to Complainant’s MYSQL mark, as any number of words are possible in connection with the mark, nor has any confusion resulted from Respondent’s domain name.
f) Respondent has a vested interest in the disputed domain name and uses the domain name for a legitimate purpose.
g) Respondent does not use the domain name in bad faith because he is using the domain in the manner for which it was built and designated.
h) Respondent disclaims on his website any association with Complainant’s business.
Complainant’s Additional Submission:
a) Respondent’s survey evidence is irrelevant and unreliable. Respondent’s survey to determine whether the <mysqlguru.com> domain name is confusingly similar to the MYSQL mark is presumably based on a full comparison of the websites of Complainant and Respondent, whereas confusing similarity under Policy ¶ 4(a)(i) deals only with the domain name itself. Thus, the survey results are not appropriate evidence to lend credibility to any confusing similarity arguments. Additionally, the survey was not conducted by qualified experts and impartial interviewers, and thus lacks all of the traditional indicia of reliability generally required by a court for consideration.
b) Respondent is not using the name in connection with a bona fide offering of goods or services because it is trading on Complainant’s famous MYSQL mark. The use of the disputed domain name is commercial and directly competitive with Complainant’s offerings.
Respondent’s “Response to the Response”:
a) The panelist disallows this Additional Submission as it is not in compliance with Supplemental Rule #7.
1. Respondent is found to have rights or legitimate interests in the <mysqlguru.com> domain name.
2. The Panel 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)).
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.
Respondent asserts that it uses the <mysqlguru.com> domain name to offer LAMP Stack deployment, mysql hosting, and remote DBA, together with a robust educational program in those subjects for students in India. Respondent claims that Complainant does not offer any of those same services. Respondent contends that the word “guru” in the domain name illustrates his Indian heritage and tells people that he has extensive knowledge in MySQL. The Panel determines that because Respondent’s domain name corresponds to his business purpose and use, Respondent indeed has legitimate rights and interests in the <mysqlguru.com> domain name pursuant to Policy ¶ 4(a)(ii). See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name).
Further, Respondent contends that it states at its resolving website, “This site is NOT affiliated with Sun Microsystems or ORACLE Corporation.” Previous panels have concluded that the presence of a disclaimer at the resolving website is evidence of a respondent’s rights or legitimate interests in the disputed domain name. See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (finding that the respondent’s website contained an express disclaimer of any affiliation with the complainant, and that the respondent had rights or legitimate interests in the <best-of-vanguard.com> domain name and did not register it in bad faith). The Panel likewise determines that the disclaimer at the resolving website demonstrates that Respondent has rights or legitimate interests in the <mysqlguru.com> domain name for the purposes of Policy ¶ 4(a)(ii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mysqlguru.com> domain name remain with Respondent.
John J. Upchurch, Panelist
Dated: October 10, 2013
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