TIBCO Software Inc. v. Richard Collins / Tacklers Ltd
Claim Number: FA1312001532753
Complainant is TIBCO Software Inc. (“Complainant”), represented by Lisa M. Martens of Fish & Richardson P.C., California, USA. Respondent is Richard Collins / Tacklers Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <tibcocloud.com>, <spotfirecloud.com>, and <openspiritcloud.com>, registered with Mesh Digital 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.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2013; the National Arbitration Forum received payment on December 4, 2013.
On December 4, 2013, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <tibcocloud.com>, <spotfirecloud.com>, and <openspiritcloud.com> domain names are registered with Mesh Digital Limited and that Respondent is the current registrant of the names. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital 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 December 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2014 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@tibcocloud.com, postmaster@spotfirecloud.com, and postmaster@openspiritcloud.com. Also on December 20, 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 January 9, 2014.
On January 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Machado 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant
a) Complainant is a leading provider of infrastructure software for companies to use on-premise or as part of cloud computing environments, for which it uses its marks.
a. Complainant has rights in the TIBCO trademark, for which it owns the United States Patent and Trademark Office (“USPTO”) registration (Reg. No. 2,770,781 registered Oct. 7, 2003).
b. Complainant has rights in the SPOTFIRE trademark, for which it owns the USPTO registration (Reg. No. 2,257,101 registered June 29, 1999).
c. Complainant has rights in the OPENSPIRIT trademark, for which it owns the USPTO registration (Reg. No. 2,884,603 registered September 14, 2004).
b) The disputed domain names are confusingly similar to Complainant’s marks.
a. The <tibcocloud.com> domain name is confusingly similar to Complainant’s TIBCO mark.
b. The <spotfirecloud.com> domain name is confusingly similar to Complainant’s SPOTFIRE mark.
c. The <openspiritcloud.com> domain name is confusingly similar to Complainant’s OPENSPIRIT mark.
d. In none of the domain names is the addition of the term “cloud” and the generic top-level domain (“gTLD”) “.com” relevant to a Policy ¶ 4(a)(i) analysis. The term “cloud” does not sufficiently distinguish the domain names from Complainant’s marks.
c) Respondent has no rights or legitimate interests in the disputed domain names.
a. Respondent is not commonly known by the disputed domain names.
b. The domain names are not used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
i. The <openspiritcloud.com> domain name resolves to a parked website being passively held.
ii. The <tibcocloud.com> domain name resolves to a competing website where Respondent posts information about Complainant’s products and offers competing technology services.
iii. The <spotfirecloud.com> domain name previously resolved to a competing website where Respondent attempts to imitate the website of one of Complainant’s competitors.
iv. The <spotfirecloud.com> domain name currently resolves to a website where Respondent displays images of wildfires, a change which occurred within hours of Respondent’s receipt of Complainant’s cease and desist letter.
d) Respondent registered and uses the disputed domain names in bad faith.
a. Respondent offered to sell the <spotfirecloud.com> domain name to Complainant. In May 2013, Complainant discovered that Respondent was passively holding the <spotfirecloud.com> domain name and requested to purchase the domain, to which Respondent replied agreeing to sell the domain name if Complainant paid $2,000. This amount far exceeded Respondent’s out-of-pocket costs. Further, when Complainant did not reply to Respondent’s offered purchase price for the <spotfirecloud.com> domain name, asking if Complainant was interested in purchasing the domain given Complainant’s upcoming conference. Clearly, Respondent was trying to pressure Complainant into purchasing the domain name.
b. Respondent has developed a pattern of registering domain names containing the marks of others.
c. Respondent registered the <openspiritcloud.com> domain name immediately following Complainant’s announcement of its acquisition of OpenSpirit Corporation. The <openspiritcloud.com> domain name was registered on September 24, 2010, merely one day after Complainant’s announcement of its acquisition of the OpenSpirit Corporation.
d. Respondent is using the <tibcocloud.com> domain name to divert consumers to Respondent’s website offering similar services so as to commercially gain from the deception. The <tibcocloud.com> domain name offers services in connection with information technology in competition with Complainant’s offerings.
e. Respondent was on notice of Complainant’s rights in its marks. At the time the domain names were registered, Complainant’s marks were known to consumers worldwide. Additionally, Complainant’s trademark registrations put Respondent on constructive notice of Complainant’s rights. Further, when Complainant did not reply to Respondent’s offered purchase price for the <spotfirecloud.com> domain name, asking if Complainant was interested in purchasing the domain given Complainant’s upcoming conference. In regard to the <openspiritcloud.com> domain name, Respondent registered the domain immediately following Complainant’s announcement of its acquisition of OpenSpirit Corporation.
B. Respondent
a) Respondent admits that the disputed domain names are confusingly similar to Complainant’s marks.
b) Respondent admits that it does not have rights or legitimate interests in the disputed domain names.
c) Respondent admits that its registration and use of the domain names were done in bad faith.
d) Respondent requests that the disputed domain names be transferred to Complainant.
The Panel verified that Complainant is, indeed, the owner of valid United States Federal registrations for the TIBCO, SPOTFIRE and OPENSPIRIT marks with the United States Patent and Trademark Office (“USPTO”).
The Panel also verified that Respondent has registered multiple domain names which are the registered trademarks of famous third parties.
Despite the fact that Respondent has agreed with Complainant’s request, the Panel decided to analyze the case under the elements of the UDRP.
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.
Complainant states that it is a leading provider of infrastructure software for companies to use on-premise or as part of cloud computing environments, for which it uses its marks. Complainant claims that it has rights in the TIBCO trademark, for which it owns the USPTO registration (Reg. No. 2,770,781 registered Oct. 7, 2003). Complainant also claims that it has rights in the SPOTFIRE trademark, for which it owns the USPTO registration (Reg. No. 2,257,101 registered Jun. 29, 1999). Complainant also claims that it has rights in the OPENSPIRIT trademark, for which it owns the USPTO registration (Reg. No. 2,884,603 registered Sep. 14, 2004). Panels have found that, regardless of the location of the parties, the registration of a mark with a trademark authority in some jurisdiction is a sufficient showing of rights to satisfy 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); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TIBCO, SPOTFIRE, and OPENSPIRIT marks under Policy ¶ 4(a)(i).
Complainant asserts that the <tibcocloud.com> domain name is confusingly similar to Complainant’s TIBCO mark. Complainant argues that the addition of the term “cloud,” which describes Complainant’s business, and the gTLD “.com” are not relevant to a Policy ¶ 4(a)(i) analysis. Past panels have found similarly. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that the <tibcocloud.com> domain name is, in fact, confusingly similar to Complainant’s TIBCO mark under Policy ¶ 4(a)(i).
As well, the Panel finds that the <spotfirecloud.com> and <openspiritcloud.com> domain names are also confusingly similar to Complainant’s SPOTFIRE and OPENSPIRIT mark pursuant to Policy ¶ 4(a)(i).
The Panel is reminded that 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 contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS records for the disputed domain names list “Richard Collins / Tacklers Ltd” as the domain name registrant. The panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), stated, “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that the domain names are not used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant points out that the <tibcocloud.com> domain name resolves to a competing website where Respondent posts information about Complainant’s products and offers competing technology services. Further, Complainant demonstrates that the <spotfirecloud.com> domain name previously resolved to a competing website where Respondent attempts to imitate the website of one of Complainant’s competitors. Panels have found that the use of a disputed domain name to host a competing website is not afforded the protections of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <tibcocloud.com> domain name and previous use of the <spotfirecloud.com> domain name are 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).
Complainant states that the <spotfirecloud.com> domain name currently resolves to a website where Respondent displays images of wildfires, a change which occurred within hours of Respondent’s receipt of Complainant’s cease and desist letter. Complainant notes also that the <openspiritcloud.com> domain name resolves to a parked website, which, the Panel notes, appears to merely list the WHOIS information for the domain. In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), the panel held that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website unrelated to the complainant. Accordingly, the Panel finds that the use Respondent makes of the <spotfirecloud.com> domain name currently and the <openspiritcloud.com> domain name is not such that would be considered a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent registered and uses the disputed domain names in bad faith. According to Complainant, Respondent offered to sell the <spotfirecloud.com> domain name to Complainant, and then in May 2013, Complainant discovered that Respondent was passively holding the <spotfirecloud.com> domain name and requested to purchase the domain, to which Respondent replied agreeing to sell the domain name if Complainant paid $2,000. Complainant argues that this amount far exceeded Respondent’s out-of-pocket costs. Further, Complainant notes that when it did not reply to Respondent’s offered purchase price for the <spotfirecloud.com> domain name, Respondent continued to contact Complainant by asking if Complainant was interested in purchasing the domain given Complainant’s upcoming conference. Complainant states that it is clear that Respondent was trying to pressure Complainant into purchasing the domain name. The Panel notes the decision in Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), where the panel found that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. Accordingly, the Panel finds that Respondent registered and is using the <spotfirecloud.com> domain name in Policy ¶ 4(b)(i) bad faith.
Complainant asserts that Respondent has developed a pattern of registering domain names containing the marks of others. Complainant provides evidence of domains registered by Respondent containing third-party marks which, though not conclusive, can strengthen an evidence of bad faith.
Complainant next alleges that Respondent is using the <tibcocloud.com> domain name to divert consumers to Respondent’s website offering similar services so as to commercially gain from the deception. Complainant notes that the <tibcocloud.com> domain name offers services in connection with information technology in competition with Complainant’s offerings. 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 offered by the complainant under its mark. Therefore, the Panel finds that Respondent registered and is using the <tibcocloud.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent registered the <openspiritcloud.com> domain name immediately following Complainant’s announcement of its acquisition of OpenSpirit Corporation. Complainant notes that the <openspiritcloud.com> domain name was registered on September 24, 2010, merely one day after Complainant’s announcement of its acquisition of the OpenSpirit Corporation. Panels have found that the registration of a domain name directly following an announcement by the complainant that is related to the domain name is evidence of having registered the domain name with opportunistic bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). Accordingly, the Panel finds that Respondent’s registration of the <openspiritcloud.com> domain name was a consequence of opportunistic bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent was aware of Complainant’s rights in its marks. At the time the domain names were registered, Complainant’s marks were known to consumers worldwide. Additionally, Complainant argues that its trademark registrations put Respondent on constructive notice of Complainant’s rights. Further, Complainant notes that when it did not reply to Respondent’s offered purchase price for the <spotfirecloud.com> domain name, asking if Complainant was interested in purchasing the domain given Complainant’s upcoming conference. In regard to the <openspiritcloud.com> domain name, Complainant states that Respondent registered the domain name immediately following Complainant’s announcement of its acquisition of OpenSpirit Corporation. Based on the above, the Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tibcocloud.com>, <spotfirecloud.com>, and <openspiritcloud.com> domain names be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
Dated: 01/27/2014
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