NATIONAL ARBITRATION FORUM
DECISION
BMC Software, Inc. v. Dominic Anschutz a/k/a Resource Management Solutions
Claim Number: FA1008001340892
PARTIES
Complainant is BMC Software, Inc. (“Complainant”), represented by Nathan C. Belzer, of Belzer PC, Georgia, USA. Respondent is Dominic Anschutz a/k/a Resource Management Solutions (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bmcelite.com>, registered with EASYDNS TECHNOLOGIES, INC.
The domain name at issue is <simplybmc.com>, registered with TUCOWS, INC.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2010. Complainant amended Compaint to supply the additional fee of $130.00, to support its contention that the multiple Respondents are one Respondent, per Supplemental Rule 1(d); and so as to supply a copy of the ICANN Policy with the Amended Complaint, in accordance withh ICANN Rule 3(b)(xv).
On August 16, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <simplybmc.com> domain name is registered with TUCOWS, INC and that the Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 August 17, 2010, EASYDNS TECHNOLOGIES, INC. confirmed by e-mail to the National Arbitration Forum that the <bmcelite.com> domain name is registered with EASYDNS TECHNOLOGIES, INC. and that the Respondent is the current registrant of the names. EASYDNS TECHNOLOGIES, INC. has verified that Respondent is bound
by the EASYDNS TECHNOLOGIES, INC. registration agreements 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 August 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2010 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@simplybmc.com and postmaster@bmcelite.com. Also on August 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 8, 2010.
On September 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
Complainant requests that the domain names <bmcelite.com> and <simplybmc.com> be transferred from Respondent to Complainant.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant, through its Annex 1, shows that a WHOIS search for <simplybmc.com> indicates that the domain name is registered to Dominic Anschutz; and through its Annex 2, that a WHOIS search for <bmcelite.com> indicates that the domain name is registered to Resource Management Solutions and that Dominic Anschutz is both the administrative and technical contact for the <bmcelite.com> domain name. The WHOIS information for <bmcelite.com> (see Annex 2) also shows that Dominic Anschutz’s address is identical to the address for Resource Management Solutions.
Complainant has attached biographical profiles of Mr. Anschutz in Annexes 4 and 5
that list him as the founder of Resource Management Solutions and as its managing director. Complainant convincingly argues that this overlap shows that Dominic Anschutz and Resource Management Solutions are controlled by the same entity, namely Mr. Anschutz.
The Panel thus finds that Complainant has presented sufficient credible evidence to show that the two disputed domain names are controlled by the same entity and therefore the single Complaint can speak to the contested domain name of <simplybmc.com> as well as to the contested domain name of <bmcelite.com>.
A. Complainant
Complainant alleges as follows:
The Complainant in this proceeding is BMC Software, Inc., (“BMC”) a Delaware corporation and the Respondent in this administrative proceeding is Dominic Anschutz a/k/a/ Resource Management Solutions. The following domain names are the subject of this Complaint: <simplybmc.com> and <bmcelite.com>.
This Complaint is based upon Respondent’s infringement of the mark BMC owned by BMC (the “BMC” mark). BMC uses the BMC Mark in connection with its software products and support and consulting services that assist companies in managing their information technology systems.
Since long prior to the registration of the domain names, BMC has made use of the trademark BMC for its products, solutions and services. BMC has continuously used the trademarks BMC and BMC SOFTWARE since at least as early as 1979.
BMC owns five US trademark registrations for the marks BMC SOFTWARE in International Classes 9 and 42 for operating system utility programs and user guides, and support and consultations services for monitoring and managing computer systems, databases and applications.
In addition, BMC owns more than ninety trademark registrations and pending applications for marks containing the component “BMC” in countries outside of the United States.
BMC owns and operates the domain name <bmc.com> which contains individual pages describing BMC’s business.
Complainant alleges that Respondent registered the disputed domain names under multiple aliases. WHOIS registration information, online biographies,and a profile on a social networking site shows that Mr. Anschutz and Resource Management Firms are controlled by the same entity, that is, Mr. Anschutz. Thus, BMC can proceed against the domain names in the instant Complaint under Paragraph 3(c) of the Rules and 4(e) of the Supplemental Rules. That is, that it is appropriate to proceed against all names in one case, where the evidence shows that disputed domain names are controlled by the same entity.
Complainant alleges that BMC has rights in the mark “BMC,” as shown by its federal trademark registrations for the mark BMC and other marks containing the component BMC. These rights are sufficient to establish BMC’s rights pursuant to Paragraph 4(a)(i) of the Policy.
The dominant portion of both domain names is BMC. Thus, the dominant portion of both domain names is identical to the BMC Mark.
Both domain names are comprised of the BMC mark, a generic term (“simply” in the case of <simplybmc.com> and “elite” in the case of <bmcelite.com>) and the generic top level domain (“gTLD”) “.com.” However, the addition of a generic term and the affixation of a gTLD to the domain names is insufficient to differentiate the domain names from BMC’s mark.
Complainant alleges that because the domain names cannot be distinguished from the BMC Mark, that consumer confusion is unavoidable. Moreover, the related services offered on the website appear to confirm the business intent to create confusion with the BMC mark.
BMC’s marks have priority of use over Respondent’s domain names. BMC has used its mark BMC continuously for over thirty years, while Respondent registered the <simplybmc.com> domain name less than two years ago and the <elitebmc.com> domain name less than three years ago.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has no affiliation with BMC, and is not commonly known by the term BMC or the disputed domain names.
BMC has not authorized Respondent to use the BMC Mark.
Respondent’s unauthorized use of the domain names to offer recruitment and networking services to those skilled in the use of BMC Software products does not demonstrate a bona fide offering of goods or services under Paragraph 4(c ) (i) of the Policy or a legitimate noncommercial or fair use under Paragraph 4
(c )(iii)of the Policy.
On information and belief from BMC’s correspondence with the Respondent, Respondent used the BMC component of the domain name <simplybmc.com> solely to increase the odds that the domain name would be found by internet users searching for the term BMC.
Complainant lastly alleges that Respondent registered the disputed domains in bad faith.
Respondent clearly had knowledge of the BMC marks when he registered the marks, as evidenced by his correspondence that he “worked with BMC products for over twelve years.”
Respondent was aware of the BMC mark while continuing to use the domain names, as evidenced by text on his site that various BMC product names “are trademarks or registered trademarks of BMC software.”
Respondent admits that he uses the <simplybmc.com> domain name in part because it optimizes search engine results. Clearly, many consumers searching for BMC or BMC products are being misdirected instead to Respondent’s domain names, which can result in individuals who are interested in a career at BMC, being confused that the website is sponsored by BMC. This reliance on consumer confusion to drive traffic to the domain names is evidence that Respondent has registered and is using the domain names in bad faith.
The disclaimer included on the domain name does not mitigate consumer confusion, because it is only visible after consumers have accessed the website and the damage has already been done. The disclaimer acknowledges consumer confusion regarding sponsorship of the website.
Respondent’s use of the domain name freeloads on the valuable goodwill BMC has built in its mark and related brand.
Upon correspondence with BMC attorneys, Respondent refused to cease using the infringing domain names, but did remove the infringing logo, and modify the web page to include links to other entities with the acronym BMC, none of which appears to supply software.
In the course of correspondence with BMC attorneys, Respondent offered to sell the domain name <simplybmc.com> to BMC for a nominal fee of $300,000. This attempt to extort funds is further evidence of bad faith on Respondent’s part.
Further evidence of Respondent’s bad faith is his secretion of his ownership of the domain name <bmcelite.com.>
B. Respondent
Respondent alleges as follows:
Respondent states that with regards to <bmcelite.com> that he is not the owner. He was the technical contact, but left the company when it went into administration, and he has no charge over the domain.
Respondent states that he had anticipated either selling or giving <simplybmc.com> to BMC, but decided to defend his rights after being told that he could not own any domain with the letters BMC in the URL.
Respondent states that the domain names cannot be interpreted as identical or confusingly similar to the trademarks owned by BMC, as the services offered on the website are recruitment services for professionals who work with BMC software. Respondent fails to see how any user would confuse these services with the software goods that are offered with BMC. Furthermore, there is a disclaimer on the website which again makes it clear that the domain names are completely distinct from BMC.
Respondent’s legitimate interest is that the websites were set up in good faith to provide recruitment services which bear no relation to any goods or services offered by BMC. BMC may have a monopoly on certain goods and services but they should not be able to control any use of the letters “BMC” in relation to a service which does not compete with them or threaten/damage their reputation.
Respondent states that he has not registered or used the disputed domain names in bad faith.
Respondent states that after approach by Belzer, PC, that he promptly made changes to the website to ensure that no confusion would exist with BMC, including removing all logos used by BMC and adding a disclaimer to the websites.
Respondent states that the nominal fee which he quoted for the domain name was 32,789 pounds and not the “exorbitant fee” of $300,000, as quoted in paragraph
47 of the Complaint. The nominal fee only covered expenses to date and not any forecasts of revenue. Respondent states that he had two buyers who were prevented from buying the domain names due to the Complaint made by BMC.
Respondent states that he uses the domain name for his own legitimate purposes and not to provide services which disrupt the business of BMC, nor does he make any commercial gain from the confusion of internet users, nor does he freeload off
any goodwill that BMC has in any of the BMC trademarks, as it is clearly marked
on the websites that his services have nothing to do with BMC.
Respondent, in his Response, provides some history as to his relationship with BMC. He states that in 1998, he founded a BMC Recruitment and consultantcy firm and it became one of the largest BMC Resellers in the UK and Africa. His entire IT career was based around BMC software. He later merged with, and then bought out, a corporation to create Resource Management Solutions, Ltd.
Respondent states that he worked with and was even a sponsor of BMC User World in 2006 and was a guest speaker . He was the sponsor of the oldest Remedy User group. BMC Software even published releases about the work which Respondent had done for them.
Respondent subsequently created a BMC Remedy consultantcy and supplied BMC with staff for over three years. Respondent states that BMC even used his idea of a BMC skilled portal as a place where BMC skilled people can meet and find work. Respondent states that he placed a number of people at BMC and that this was a core part of his business. He even became a BMC affiliated partner. BMC signed up as a resource provider, as an education provider and used the site in 2009. Respondent presented a presentation to BMC. BMC Resellers used the portal as well. Per the request of UK solicitors, Respondent issued disclaimers, and changed his cube logo, which bared no similarity to BMC’s mark.
Respondent stated that he wanted to sell the domain to a BMC related recruitment firm, as it had such a high ranking which he had taken years to build up.
Respondent includes in his Response, an e-mail dated May 21, 2010, addressed to UK solicitor Hamlish in which he states that “But I do not see how BMC can demand a domain they paid nothing for and the huge amount of traffic that is passing through it?”
Respondent concludes that company names such as “Oracle Consultants” are used as a term to describe the skill and type of consultant. He states that he was creating a user group and forum where BMC skilled people can meet and look for BMC specific skilled jobs. He concludes his Response with the statement that “So in simple terms, I created SimplyBMC, a job board for BMC skilled consultants.”
FINDINGS
The domain names <simplybmc.com> and <bmcelite.com> registered by the Respondent are identical or confusingly similar to a trademark or service mark,
that is, BMC and BMC SOFTWARE , in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the domain names; and the domain names have been registered and are being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant has provided evidence through its Annex 3 of its multiple trademark registrations for its BMC mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,608,243 issued August 13, 2002) and for its BMC SOFTWARE mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,431,612 issued July 10, 1990) in connection with its computer software programs. The Panel finds that Complainant’s registrations of its BMC and BMC SOFTWARE marks with national trademark offices is sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The <simplybmc.com> and <bmcelite.com> domain names are identical or confusingly similar to Complainant’s BMC mark, because Respondent’s domain names incorporate the entirety of Complainant’s BMC mark and merely adds the
generic terms “simply” and “elite,” along with the generic top-level domain (“gTLD”) “.com.”
Furthermore, consumer confusion is also occasioned by the similarity of the goods and services for which Complainant’s trademarks of BMC and BMC SOFTWARE are the well-worn calling cards (date of first use of 1979 and first USPTO registration in 1996) and for which Respondent’s domain names of <simplybmc.com> and <bmcelite.com> are the newly laid-out welcome mats. That is, Complainant’s trademarks and service marks are registered for (BMC) computer software programs in International Class 9 and for (BMC) support and consultation systems in International Class 42; whereas, Respondent’s recently registered websites (two to three years ago) of <simplybmc.com> offers jobs for BMC software specialists and his website of <bmcelite.com> offers a networking site for BMC Professionals. Therefore, both BMC software seekers and BMC jobseekers are likely to be confused as to the sponsorship of Respondent’s sites.
The Panel then finds that the domain names registered by the Respondent
are identical or confusingly similar to a trademark or servicemark in which the Complainant has rights. See 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); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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 that 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’s allegation that Respondent has no association with Respondent
is not entirely credible, given Respondent’s evidence that Resource Management Solutions was a sponsor of the oldest Remedy user Group; that BMC Software published a release referencing Turing SMI (Resource Management Solutions predecessor- in- interest) as a “BMC Premier Partner” and that BMC Software listed itself as an employer on Respondent’s website in 2009.
However, an association or an affiliation that at one time mutually benefited the parties through educational and or support activities, does not rise to the legal level of an authorization, which is secured by written permission or a license. For sophisticated players in the software field, of which it can be garnered by the pleadings, refers to both Complainant and Respondent, it can be assumed that they are aware of the distinction between the concepts of ownership and license to use. And here, neither party offers evidence of a license from Complainant enabling use by the Respondent of Complainant’s marks.
To the contrary, Complainant credibly asserts through its Annex 6, containing correspondence between Respondent and counsel for BMC, as well as through Annex 12, Cease and Desist Letter from BMC to Respondent, BMC’s repeated and vigorous objections to Respondent’s use of the BMC Mark in the domain name <simplybmc.com.>
Further, Respondent has not offered any evidence that it is commonly known by the BMC mark referenced in the <simplybmc.com> and <bmcelite.com> domain names. Rather, the WHOIS information indicates that the Respondent is “Dominic Anschutz a/k/a Resource Management Solutions.”
The Panel finds that Respondent was neither authorized to use Complainant’s marks, nor was Respondent commonly known by the disputed domain names. Therefore, Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also 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).
Complainant shows through Annex 7, Webpage Found at the Domain Name,
that Respondent’s disputed domain names resolve to websites offering recruitment and networking services to users of Complainant’s software products. Complainant presumes that Respondent profits in some way from the content displayed on the resolving websites. The Panel finds that this usage is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Respondent, in its annexed e-mail of 12/25/2009 to Mr. Belzer, states that he will comply to the requests, by among other items, adding a disclaimer to the site, stating that “this site is neither owned, operated, sponsored, nor affiliated with BMC Software, Inc, BMC or BMC Software.” Complainant states that the disclaimer does nothing to resolve or mitigate the initial interest confusion created by that domain name. The Panel agrees that since no disclaimer accompanies the domain name itself, that consumers do not view the disclaimer until after they have accessed the website. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Complainant offers as evidence, Annex 14, which contains Respondent’s e-mail of May 8, 2010, wherein, Respondent offered to sell the <simplybmc.com> domain name to Complainant for a fee of more than $300,000. The Panel finds that Respondent’s offer to sell the <simplybmc.com> domain name for an amount grossly in excess of proven out-of-pocket costs, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston
Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark, prior to registration of the domain name. This knowledge is evidenced by Respondent’s May 5, 2010 email to BMC’s counsel, contained in Complainant’s Annex 9, wherein Respondent states that he has “worked with BMC products for over 12 years.” Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, in the instant case, Panel finds that Respondent had actual knowledge of Complainant's mark, and so finds that the Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat., Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); 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).
Complainant asserts that Respondent offered to sell the <simplybmc.com> domain name for $300,000, in his e-mail of May 8, 2010 to BMC’s Counsel. The Panel finds that Respondent’s offer to sell the disputed domain name for an amount grossly in excess of Respondent’s proven out-of-pocket costs is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent’s e-mail of January 6, 2010 states that Respondent had invested certain sums in increasing the Google ranking of the <simplybmc.com> domain name. Respondent further stated that he uses this domain name because it
optimizes search engine results. Thus, Complainant has fairly surmised that Respondent profits from the confusion of Internet users seeking Complainant’s products and services who are then redirected to Respondent’s websites which offer services unrelated to Complainant.
Panel finds credible evidence to conclude that Respondent’s use of the disputed domain names is an intentional attempt to attract, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Therefore, Respondent has used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Complainant argues that the disclaimer included on Respondent’s resolving websites does nothing to resolve or mitigate the initial interest confusion created by the disputed domain names. The Panel concurs that Respondent’s disclaimer is necessarily ineffective in resolving initial internet confusion, and thus does not mitigate a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “).
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 <simplybmc.com> and <bmcelite.com> domain names be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Esq., Panelist
Dated: October 6, 2010
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