SAS Institute Inc. v. MDAPEX LLC / James W
Claim Number: FA1309001521951
Complainant is SAS Institute Inc. (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is MDAPEX LLC / James W (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sassavvy.net>, registered with BIGROCK SOLUTIONS LIMITED.
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 September 30, 2013; the National Arbitration Forum received payment on September 30, 2013.
On October 1, 2013, BIGROCK SOLUTIONS LIMITED confirmed by e-mail to the National Arbitration Forum that the <sassavvy.net> domain name is registered with BIGROCK SOLUTIONS LIMITED and that Respondent is the current registrant of the name. BIGROCK SOLUTIONS LIMITED has verified that Respondent is bound by the BIGROCK SOLUTIONS LIMITED 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 October 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@sassavvy.net. Also on October 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 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. 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 makes the following contentions:
B. Respondent did not submit a Response.
1. Respondent’s <sassavvy.net> domain name is confusingly similar to Complainant’s SAS mark.
2. Respondent does not have any rights or legitimate interests in the < <sassavvy.net> domain name.
3. Respondent registered or used the <sassavvy.net > 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 states that it uses its SAS mark to identify its computer software-related products and services, and that Complainant is the largest privately-owned software company in the world. Complainant has registered its SAS mark with various intellectual property agencies around the world, including the USPTO (e.g., Reg. No. 1,132,122 registered April 1, 1980) and the Australian DIISRTE (e.g., Reg. No. 419,950 registered September 20, 1990). See Complainant’s Exhibit 2. Previous panels have held that a complainant sufficiently establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark with various intellectual property agencies around the world. 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). Therefore, the Panel holds that Complainant has sufficiently established its rights in the SAS mark pursuant to Policy ¶ 4(a)(i).
Complainant next asserts that the <sassavvy.net> domain name is confusingly similar to Complainant’s SAS mark because the domain name incorporates the mark in its entirety and merely adds the gTLD “.net” and the term “savvy.” The Panel notes that it has previously been determined that a domain name’s addition of a gTLD such as “.net” is irrelevant for the purposes of a confusing similarity analysis under the Policy. 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). The Panel further notes that previous panels have held that a domain name that fully incorporates a complainant’s mark and merely adds a generic or descriptive term is confusingly similar to the mark under the Policy. See, e.g., Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). In the instant case, the Panel determines that the term “savvy” is a generic or a descriptive term as was the case in Am. Express Co., supra, and thus holds that the <sassavvy.net> domain name is confusingly similar to the SAS mark under 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 argues that Respondent is not commonly known by the <sassavvy.net> domain name under Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “MDAPEX LLC / James W,” not <sassavvy.net>. Previous panels have held that a respondent is not commonly known by the disputed domain name where nothing in the record, including the WHOIS information, suggests otherwise. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). In the instant proceedings, the Panel accepts Complainant’s assertion that the WHOIS information suggests Respondent is commonly known as “MDAPEX LLC / James W,” not <sassavvy.net>. The Panel notes that according to screenshots provided by Complainant, Respondent holds itself out as “SAS SAVVY INC.” on the at-issue website. See Complainant’s Exhibit 5. However, the Panel further notes that in Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003), the panel stated: “While [the] [r]espondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that [the] [r]espondent was actually or commonly known by the disputed domain name.” The Target Brands, supra, panel further held that the fact that the respondent declined to respond to the complainant’s charge suggested that the respondent was not legitimately known as <targetpills.com>. Pursuant to this precedent, the Panel reasons that although Respondent holds itself out as “SAS SAVVY INC.” on the at-issue website, this alone fails to establish that Respondent is commonly known by the disputed domain name, particularly since Respondent did not submit a Response. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not using the disputed 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) because the disputed domain name resolves to a commercial website in which Respondent provides online training relating to Complainant’s software-related products and services. See Complainant’s Exhibit 5. Complainant suggests that Respondent is thus a direct competitor of Complainant in the industry of software-related products and services. The Panel notes that in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel held that the respondent was not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks. In the instant proceedings, the Panel reasonably determines that Complainant offers trainings relating to its SAS software products that directly compete with those offered by Respondent through its use of the <sasssavvy.net> domain name. Accordingly, the Panel holds that Respondent’s use of the disputed domain name is not protected as 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).
Complainant also suggests that Respondent is using the <sassavvy.net> domain name to pass itself off as Complainant, which further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Screenshots of the at-issue website provided by Complainant show that the website prominently and repeatedly displays Complainant’s SAS mark, including headings entitled “SAS: THE POWER TO KNOW,” “SAS COMPLETE PACK,” and “An Introduction to SAS Macros,” among others. See Complainant’s Exhibit 5. The Panel notes that in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), a previous panel held that the respondent lacked rights or legitimate interests in the disputed domain name where the respondent attempted to pass itself off as the complainant online, which included blatant unauthorized use of the complainant’s mark on the at-issue website. In the instant proceedings, the Panel determines that Respondent has blatantly used Complainant’s SAS mark without authorization from Complainant. Accordingly, the Panel holds that Respondent has attempted to pass itself off as Complainant online, which further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has demonstrated bad faith registration and use of the <sassavvy.net> domain name under Policy ¶ 4(b)(iii), because the domain name targets potential customers of Complainant and redirects them to Respondent’s competing commercial website that offers online trainings relating to Complainant’s SAS software-related products and services. See Complainant’s Exhibit 5. The Panel notes that in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), the panel found that the respondent had demonstrated bad faith registration and use under Policy ¶ 4(b)(iii), reasoning that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create Internet user confusion. In the instant proceedings, the Panel reasonably determines that Complainant offers trainings relating to its SAS software-related products and services, and thus, that Respondent is a direct competitor of Complainant. Accordingly, the Panel reasons as the panel did in Suface Prot. Indus., supra, that Respondent registered the <sassavvy.net> domain name to target Internet users seeking services under Complainant’s SAS mark and divert them to Respondent’s own competing commercial website. The Panel finds that this diversion disrupts Complainant’s business and thus demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has demonstrated bad faith registration and use of the <sassavvy.net> domain name under Policy ¶ 4(b)(iv), because the disputed domain name appropriates Complainant’s SAS mark and thus creates a likelihood that Internet users will mistake the resolving website as being associated with Complainant. Complainant further contends that Respondent is commercially benefitting from this confusion in the form of increased Internet traffic to its commercial website, which contains links to various training products and services and includes a button that states “Buy Now.” See Complainant’s Exhibit 5. The Panel notes that in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those offered by the complainant under its mark. In the instant proceedings, the Panel holds that the disputed domain name is confusingly similar to Complainant’s SAS mark because the domain name fully appropriates the mark and merely adds the generic term “savvy.” Furthermore, as in MathForum.com, supra, the Panel determines that Respondent is using the disputed <sassavvy.net> domain name to host a commercial website that offers trainings on how to use Complainant’s SAS software that compete with trainings offered by Complainant under its SAS mark. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Complainant also suggests that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii) by using the disputed domain name in an attempt to pass itself off as Complainant. See Complainant’s Exhibit 5. As noted above, screenshots of the at-issue website provided by Complainant show that the website prominently and repeatedly displays Complainant’s SAS mark, including headings entitled “SAS: THE POWER TO KNOW,” “SAS COMPLETE PACK,” and “An Introduction to SAS Macros,” among others. See Complainant’s Exhibit 5. Previous panels have held that a respondent’s use of a disputed domain name to try to pass itself off as the complainant is evidence of the respondent’s bad faith under Policy ¶ 4(a)(iii). See, e.g., Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). In the instant proceedings, the Panel determines from the screenshots submitted by Complainant that Respondent is attempting to pass itself off as Complainant, and that this passing off behavior evidences Respondent’s bad faith registration and use of the <sassavvy.net> domain name under Policy ¶ 4(a)(iii).
Finally, Complainant suggests that the content of the website resolving from the <sassavvy.net> domain name indicates that Respondent registered the disputed domain name with actual notice of Complainant and its rights in the SAS mark, which tends to show Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Complainant’s Exhibit 5. Complainant also suggests that Respondent’s actual notice can further be inferred given Complainant’s status as the largest privately-owned software company in the world. The Panel notes that it has previously been determined that a respondent that registers an infringing domain name with actual notice of the complainant and its rights in a mark demonstrates bad faith under Policy ¶ 4(a)(iii). See, e.g., 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). Previous panels have inferred that a respondent had such actual notice where the complainant and its mark is very well-known or where the link between the complainant’s mark and the content on the at-issue website is clear. 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); 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”). In the instant proceedings, the Panel holds that there is a clear link between Complainant’s SAS mark and the SAS software-related products and services offered by Respondent on the at-issue website. See Complainant’s Exhibit 5. Moreover, the Panel accepts Complainant’s contention that the SAS mark is extremely well-known as Complainant is the largest privately-owned software company in the world. Accordingly, the Panel infers that Respondent registered the <sassavvy.net> domain name with actual knowledge of Complainant and Complainant’s SAS mark, and the Panel holds that this actual knowledge is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sassavvy.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 13, 2013
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