Ceridian Corporation v. Versata Software, Inc. c/o Versata Hostmaster
Claim Number: FA0904001259927
Complainant is Ceridian
Corporation (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ceridiashare.net>, registered with Red Register, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 29, 2009.
On April 30, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <ceridiashare.net> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. has verified that Respondent is bound by the Red Register, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ceridiashare.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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 assertions:
1. Respondent’s <ceridiashare.net> domain name is confusingly similar to Complainant’s CERIDIAN mark.
2. Respondent does not have any rights or legitimate interests in the <ceridiashare.net> domain name.
3. Respondent registered and used the <ceridiashare.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ceridian Corporation, began as an information services corporation in 1992. Complainant is currently a global single-source provider of human resource solutions, including payment distribution and retail financial transaction services. Complainant has registered its CERIDIAN mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,868,786 issued December 20, 1994). Complainant maintains its primary website at the <ceridian.com> domain name, and uses an Intranet under the “CeridiaShare” name.
Respondent registered the <ceridiashare.net> domain name on June 2, 2007. The disputed domain name previously resolved to a website that disseminated malware and computer viruses to the computers of Internet users reaching the disputed domain name. After receipt of Complainant’s cease-and-desist letter, the disputed domain name resolved to a website with adult-oriented materials but continued to spread malware.
Respondent has been the respondent in other UDRP proceedings wherein the disputed domain names where transferred from Respondent to the respective complainants in those cases. See, e.g., Enter. Rent-A-Car Co. v. Versata Software, Inc. et al, FA 1072909 (Nat. Arb. Forum Nov. 9, 2007); see also Cambridge Pavers, Inc. v. Versata Software, Inc. et al, FA 1112558 (Nat. Arb. Forum February 18, 2008).
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."
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.”).
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.
By evidencing its registrations of the CERIDIAN mark with
the USPTO, Complainant has demonstrated its rights in the mark under Policy ¶
4(a)(i).
While the Panel notes that the disputed domain name mirrors Complainant’s Intranet name, the Panel will analyze the disputed domain name in reference to Complainant’s mark. The <ceridiashare.net> domain name contains the dominant portion of the CERIDIAN mark while omitting the “n” from the mark and adding the generic term “share” and the generic top-level domain “.com.” The omission of a letter from a mark, like the addition of a generic term, typically fails to render the disputed domain name sufficiently distinct from a mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also notes that the addition of a generic top-level domain is considered irrelevant under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has set forth sufficient allegations supporting a prima facie case, and thus Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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 WHOIS information lists Respondent as “Versata Software,
Inc. c/o Versata Hostmaster.”
Complainant also contends that Respondent lacks any right or
authorization to use Complainant’s mark.
Given this aforementioned evidence, along with the fact that Respondent
has not countered any of these assertions with a response, the Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also
The disputed domain name has resolved to various websites
wherein computer viruses are distributed to unwary Internet users and/or
adult-oriented content has been displayed.
The Panel infers that Respondent ultimately intended some form of
commercial benefit through the provision of either website, and that Respondent
failed to create any semblance of a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 24/7
Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding no bona fide offering of goods and services
when the respondent used the disputed domain name for the distribution of
malware or hostile software); see also Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding
that the respondent was using the disputed domain name to resolve to a
website that attempted to download malware onto Internet users’ computers,
which was not 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 takes the time to note that Respondent’s provision
of adult-oriented materials on the resolving website independently demonstrates
Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Bates, FA
192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a
domain name that is confusingly similar to another's mark by linking the domain
name to an adult-oriented website [is] evidence that the registrant lacks
rights or legitimate interests in the domain name.”); see also Nat’l
Football League Props., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr.
17, 2000) (finding that the respondent had no rights or legitimate interests in
the domain name <chargergirls.net> where the respondent linked the domain
name to its pornographic website).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is not new to proceedings under the UDRP. Respondent has been the respondent in other
UDRP proceedings wherein the disputed domain names where transferred from
Respondent to the respective complainants in those cases. See,
e.g., Enter. Rent-A-Car Co. v.
Versata Software, Inc. et al, FA 1072909 (Nat. Arb. Forum Nov. 9, 2007); see also Cambridge Pavers, Inc. v. Versata
Software, Inc. et al, FA 1112558 (Nat. Arb. Forum February 18, 2008). In cases such as this, panels have found that
a pattern of bad faith registration and use exists under Policy ¶ 4(b)(ii). See, e.g., Arai Helmet Americas,
Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005
(finding that “Respondent has registered the disputed domain name,
<aria.com>, to prevent Complainant from registering it” and taking notice
of another Policy proceeding against the respondent to find that “this is part
of a pattern of such registrations”); see
also Westcoast
Contempo Fashions Ltd. v.
Moreover, the Panel infers that Respondent, by some machination or scheme, intentionally sought some form of profit from its provision of malicious computer viruses and malware, as well as from its provision of adult-oriented material. Whether through some sort of fraud interminably intertwined with the computer viruses, or through general advertising on the resolving website, the Panel finds that Respondent intentionally sought to commercially gain from the likelihood of confusion that exists between Complainant’s mark and the disputed domain name. Therefore, Respondent is found to have engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding the respondent’s use of a website to distribute malware was an attempt to attract Internet users to its website or other online location for commercial gain, by creating a likelihood of confusion with the complainant’s mark.); see also Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding that the respondent’s use of the disputed domain name to introduce malware onto Internet users’ computers is presumably an attempt by the respondent to profit from the confusingly similar disputed domain name through the receipt of fees for engaging in this behavior or the use of information gained from the malware software to obtain some form of revenue and is thus evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Finally, the Panel finds
that the provision of adult-oriented material itself constitutes sufficient
evidence under Policy ¶ 4(a)(iii) for the Panel to
find that Respondent registered and continues to use the disputed domain name
in bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum
Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names were
being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the
diversion of the domain name to a pornographic site is itself certainly
consistent with the finding that the Domain Name was registered and is being
used in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ceridiashare.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 23, 2009
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