Scrum Alliance, Inc. v. Domain Manager / samirnet -domain names for sale
Claim Number: FA1310001522988
Complainant is Scrum Alliance, Inc. (“Complainant”), represented by David M. Perry of Blank Rome LLP, Pennsylvania, USA. Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scrum-alliance.org>, registered with Gal Communication (CommuniGal) Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2013; the National Arbitration Forum received payment on October 4, 2013.
On October 8, 2013, Gal Communication (CommuniGal) Ltd. confirmed by e-mail to the National Arbitration Forum that the <scrum-alliance.org> domain name is registered with Gal Communication (CommuniGal) Ltd. and that Respondent is the current registrant of the name. Gal Communication (CommuniGal) Ltd. has verified that Respondent is bound by the Gal Communication (CommuniGal) Ltd. 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@scrum-alliance.org. Also on October 10, 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 November 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant is an internationally-recognized professional membership organization, encouraging and supporting the widespread adoption and effective practice of Scrum.
b. According to Complainant Scrum is a “set of principles and practices that help teams deliver products in short cycles, enabling fast feedback, continual improvement, and rapid adaptation to change.”
c. Complainant’s SCRUM ALLIANCE mark is used in many jurisdictions throughout the world, including Australia, Canada, China, the European Union, India, Japan, South Africa, South Korea, and the United States.
d. Complainant contends it has rights in the SCRUM ALLIANCE mark, used in connection with product development and project management. Complainant owns a registration for the SCRUM ALLIANCE mark with the Office of the Controller-General of Patents, Designs and Trademarks in India (See Reg. No. 1,813,182 registered February 21, 2011). Complainant also owns a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (See Reg. No. 3,548,753 registered Dec 23, 2008).
e. Respondent’s <scrum-alliance.org> domain name is confusingly similar to Complainant’s SCRUM ALLIANCE mark. The disputed domain name incorporates Complainant’s mark in its entirety while also adding a hyphen.
f. Respondent does not have any rights or legitimate interests in the <scrum-alliance.org> domain name.
g. Respondent is not commonly known by the disputed domain name, and Complainant has not given Respondent permission to use its SCRUM ALLIANCE mark in any way.
h. Respondent is not using the <scrum-alliance.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name contains hyperlinks to third-party websites offering services that directly compete with Complainant’s business. Complainant assumes Respondent is receiving click-through revenue from the hyperlinks displayed on the disputed domain name.
i. Respondent registered and is using the <scrum-alliance.org> domain name in bad faith.
j. Respondent has listed the disputed domain name for sale to the general public.
k. Respondent is a cybersquatter who has engaged in a pattern of bad faith domain name registration.
l. The resolving website contains third-party hyperlinks to Complainant’s competitors, and Respondent is attempting to obtain commercial gain via click-through revenue by attracting and misleading Internet users to the <scrum-alliance.org> domain name.
m. Respondent had constructive knowledge of Complainant’s SCRUM ALLIANCE mark because Complainant’s mark is widely-known.
n. Respondent registered the <scrum-alliance.org> domain name on June 30, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SCRUM ALLIANCE mark. Respondent’s domain name is confusingly similar to Complainant’s SCRUM ALLIANCE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <scrum-alliance.org> domain name, and that Respondent registered and uses 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 it has rights in the SCRUM ALLIANCE mark, used in connection with product development and project management. Complainant states it owns a registration for the SCRUM ALLIANCE mark with the Office of the Controller-General of Patents, Designs and Trademarks in India (See Reg. No. 1,813,182 registered February 21, 2011). Complainant states it also owns a registration for the mark with the USPTO (See Reg. No. 3,548,753 registered Dec 23, 2008). Therefore, the Panel finds that Complainant has rights in the SCRUM ALLIANCE mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next alleges Respondent’s <scrum-alliance.org> domain name is confusingly similar to Complainant’s SCRUM ALLIANCE mark. The disputed domain name incorporates Complainant’s mark in its entirety while also adding a hyphen. The domain name also includes the generic top-level domain (“gTLD”) “.org.” The addition of a hyphen and a gTLD is irrelevant for the purposes of confusing similarity analysis under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel y find that Respondent’s <scrum-alliance.org> domain name is confusingly similar to Complainant’s SCRUM ALLIANCE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have any rights or legitimate interests in the <scrum-alliance.org> domain name. Complainant claims Respondent is not commonly known by the disputed domain name, and Complainant has not given Respondent permission to use its SCRUM ALLIANCE mark in any way. The WHOIS record for the disputed domain name lists “Domain Manager / samirnet -domain names for sale” as the domain name registrant. The WHOIS record has been recognized as a source to determine to determine whether a respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the SCRUM ALLIANCE mark, and neither the WHOIS information nor the other evidence in the record indicate otherwise, the Panel finds that Respondent is not commonly known by the <scrum-alliance.org> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <scrum-alliance.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant notes that the domain name contains hyperlinks to third-party websites offering services that directly compete with Complainant’s business. Complainant assumes Respondent is receiving click-through revenue from the hyperlinks displayed on the disputed domain name’s resolving website. Using a domain name to display competing third-party links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <scrum-alliance.org> domain to display competing third-party links does not constitute 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <scrum-alliance.org> domain name in bad faith. Complainant asserts that Respondent has listed the disputed domain name for sale to the general public. An offer to sell a domain name has been found to constitute bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent’s general offer for sale of the <scrum-alliance.org> domain name for $390.00 constitutes bad faith under Policy ¶ 4(b)(i).
Complainant claims Respondent is a cybersquatter who has engaged in a pattern of bad faith domain name registration, citing several UDRP decisions in which Respondent was found to have acted in bad faith. See, e.g., Bed Bath & Beyond Procurement Co. v. samirnet -domain names for sale, FA 1502697 (Nat. Arb. Forum July 9, 2013); Charlotte Russe Merchandising, Inc. v. Samir Kumar c/o samirnet -domain names for sale, FA 1302325 (Nat. Arb. Forum Mar. 16, 2010); Balenciaga S.A. v. Samir Kumar, D2009-0758 (WIPO July 30, 2009); Neiman Marcus Group, Inc. v. Samir Kumar, FA 1267257 (Nat. Arb. Forum July 22, 2009); Pfizer Inc. v. Samir Kumar, D2009-0429 (WIPO May 20, 2009); F. Hoffmann-La Roche AG v. Samir Kumar, samirnet -domain names for sale, D2008-0919 (WIPO Aug. 8, 2008); F. Hoffmann-La Roche AG v. Samir Kumar, D2008-0808 (WIPO July 21, 2008). This type of evidence has been found to constitute bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent’s involvement in prior UDRP proceedings that resulted in the transfer of the disputed domain names constitutes bad faith under Policy ¶ 4(b)(ii).
Complainant alleges that the resolving website contains third-party hyperlinks to Complainant’s competitors, and Respondent is attempting to obtain commercial gain via click-through revenue by attracting and misleading Internet users to a <scrum-alliance.org> domain name. Complainant notes that the disputed domain name contains hyperlinks to third-party websites offering services that directly compete with Complainant’s business. Attracting Internet users to a confusingly similar domain name for a respondent’s own commercial gain constitutes 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.’”). Thus, the Panel finds that Respondent registered and uses the <scrum-alliance.org> domain name in bad faith according to Policy ¶ 4(b)(iv).
Lastly, because the domain name is virtually identical to Complainant’s mark, the Panel determines Respondent had actual knowledge of Complainant’s mark, and therefore finds that the domain name was registered in bad faith under Policy ¶ 4(a)(iii). See 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).
The Panel finds Complainant has satisfied 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 <scrum-alliance.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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