SimScale GmbH v. Oliver Sharp
Claim Number: FA1401001537384
Complainant is SimScale GmbH (“Complainant”), represented by Johannes Probst of SimScale GmbH, Germany. Respondent is Sharp, Oliver (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simscale.com>, registered with Network Solutions, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2014; the National Arbitration Forum received payment on January 6, 2014.
On January 9, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <simscale.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 January 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@simscale.com. Also on January 9, 2014, 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 January 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC 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
Complainant makes the following contentions:
1. Policy ¶ 4(a)(i)
a. Complainant uses the SIMSCALE mark in connection with its commercial browser-based platform for engineering simulation, as well as a community around this platform where engineers can collaborate with each other and exchange knowledge.
b. Complainant owns common law rights in the SIMSCALE mark, which is evidenced by customer recognition of the mark as well as Complainant’s application to register the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Serial No. 79-131,773 filed September 25, 2013). See Complainant’s Exhibit 8.
c. The <simscale.com> domain name is identical to Complainant’s SIMSCALE mark pursuant to Policy ¶ 4(a)(i).
2. Policy ¶ 4(a)(ii)
a. Complainant has not authorized Respondent to use the SIMSCALE trademark, and Respondent is likely not commonly known by the <simscale.com> domain name.
b. The disputed domain name currently resolves to a generic search engine website which also displays advertisements. See Complainant’s Exhibit 2.
c. From around January 2013 to at least October 7, 2013, the <simscale.com> domain name resolved to an inactive, parked website. See Complainant’s Exhibits 1 & 3. As of October 7, 2013, the at-issue website contained some (apparently faulty) code, which contained references to the product “Google AdSense for Domains,” the purpose of which is to generate revenue for parked websites. See Complainant’s Exhibit 3.
3. Policy ¶ 4(a)(iii)
a. The <simscale.com> domain name currently resolves to a generic, commercial search engine.
b. Respondent previously “parked” the disputed domain name, which is further evidence of Respondent’s bad faith registration and use of the disputed domain name. Respondent has used a privacy service to hide its true identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a German company that operates a commercial browser-based platform for engineering simulation, as well as a community around this platform where engineers can collaborate with each other and exchange knowledge.
2. Complainant owns common law rights in the SIMSCALE mark, which is evidenced by customer recognition of the mark.
3. Respondent registered the disputed domain name on August 3, 2011.
4. The <simscale.com> domain name currently resolves to a generic, commercial search engine. Respondent previously “parked” the disputed domain name, which is further evidence of Respondent’s bad faith registration and use of the disputed domain name. Respondent has used a privacy service to hide its true identity.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant states that it uses the SIMSCALE mark in connection with its commercial browser-based platform for engineering simulation, as well as a community around this platform where engineers can collaborate with each other and exchange knowledge. Complainant asserts that it owns rights in the SIMSCALE mark under Policy ¶ 4(a)(i) through its common law rights in the mark. The Panel notes that the Policy does not require a complainant to register its mark with a national trademark authority in order to establish its rights in the mark sufficiently. See, e.g., Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, a complainant may demonstrate that it has gained common law rights in a mark because the mark is recognized by consumers and indicates the complainant as the source of a product or service. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Therefore, the Panel determines whether Complainant has common law rights in the SIMSCALE mark and may accordingly determine whether Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the SIMSCALE mark has developed secondary meaning identifying its engineering simulation product and community, because the mark has received publicity in the form of press releases and press coverage. Complainant further asserts that it is the owner of the <simscale.de>, <simscale.it>, <simscale.ca>, <simscale.eu>, <simscale.info>, <simscale.biz>, <simscale-platform.com>, and <simscale-engineering.com> domain names, which are widely and actively visited by Internet users. Complainant also points to its application to register the SIMSCALE mark with the USPTO as further evidence of Complainant’s common law rights in the mark (e.g., Serial No. 79-131,773 filed September 25, 2013). See Complainant’s Exhibit 8. However, the Panel nots that typically a pending trademark application with the USPTO, without more, is held to be insufficient to establish a complainant’s rights in the applied-for mark. See, e.g., ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”). The Panel notes that it has previously been held that a trademark’s recognition in the media is evidence of the complainant’s common law rights in the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Previous panels have also found that a complainant establishes common law rights in a mark by showing that the website that the complainant operates under the mark is commercially successful. See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”) The Panel notes that Complainant does not submit proof that the SIMSCALE mark has widely received press, nor proof that Complainant is the owner of additional, widely visited “simscale” domain names such as <simscale.eu>. Nonetheless, Complainant’s allegations are not disputed, and as the Panel accepts these contentions as true, it finds that they suffice to establish Complainant’s common law rights in the SIMSCALE mark in accordance with the decisions discussed above. Such a finding allows the Panel to hold that Complainant established its rights in the SIMSCALE mark pursuant to Policy ¶ 4(a)(i) and it makes that finding.
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SIMSCALE marks. Complainant argues that the <simscale.com> domain name is identical to its SIMSCALE mark under Policy ¶ 4(a)(i). The Panel notes that the disputed domain name merely affixes the generic top-level domain (“gTLD”) “.com.” The Panel notes that it has previously been held that a disputed domain name is identical to a mark where the domain name incorporates the mark in its entirety and merely affixes the gTLD “.com.” See, e.g., Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel holds that the <simscale.com> domain name is identical to Complainant’s SIMSCALE mark under Policy ¶ 4(a)(i).
Accordingly, Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SIMSCALE common law trademark and to use it in its domain name;
(b) The <simscale.com> domain name currently resolves to a generic, commercial search engine and Respondent previously “parked” the disputed domain name;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that it has not authorized Respondent to use its SIMSCALE mark in a domain name and that Respondent is likely not commonly known as <simscale.com> pursuant to Policy ¶ 4(c)(ii). The Panel notes that previous panels have held that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) where the complainant asserts that it has not authorized the respondent to use the appropriated mark and where nothing in the record, including the WHOIS information, suggests that the respondent is commonly known by the disputed domain name. See, e.g., 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). Here, the Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Oliver Sharp,” and the Panel holds that this WHOIS information does not suggest that Respondent is commonly known as <simscale.com>. The Panel also concludes that nothing else in the record suggests that Respondent is commonly known as <simscale.com>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
(e)Complainant next suggests that Respondent is not using the <simscale.com> 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 generic search engine website that also displays advertisements. See Complainant’s Exhibit 2. The Panel notes that according to a screenshot submitted by Complainant, the disputed domain name resolves to a generic-looking website containing a search box as well as links entitled, “ISA,” “Cape,” “Cooking,” and “Wood,” among others. See id. The Panel thus concludes that the disputed domain name resolves to a website containing a commercial search engine as well as hyperlinks to third parties that are unrelated to Complainant’s business in the engineering industry. Previous panels have held that a respondent’s use of a disputed domain name to promote links to commercial websites unrelated to the complainant’s mark is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Therefore, the Panel holds that Respondent’s use of the disputed domain name to promote links to unrelated third parties 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);
(f) Complainant also argues that from around January 2013 to at least October 7, 2013, the <simscale.com> domain name resolved to a parked website, which is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Complainant’s Exhibit 3. To support this assertion, Complainant has submitted a listing of the HTML code available for the <simscale.com> domain name through “view-source:simscale.com” as of October 7, 2013. See id. The Panel notes that this listing contains the following code: “http://pagead2.googlesyndication.com/apps/domainpark/show_afd_ads.js.” Id. Complainant argues that this code references the product “Google AdSense for Domains,” the purpose of which is to generate revenue for parked websites. From the submitted HTML coding, Complainant concludes that the at-issue website utilized this parking application as of October 7, 2013 (though improperly, given the fact that the at-issue website displayed only a blank page, which is discussed below). It has previously been held that a respondent’s parking of a disputed domain name for its own commercial gain is 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). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). Therefore, as the Panel accepts Complainant’s assertion that Respondent previously parked the <simscale.com> domain name for its own commercial gain, the Panel holds that this parking behavior is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under ¶ 4(a)(ii).
(g)Finally, Complainant argues that Respondent’s previous failure to make an active use of the <simscale.com> domain name is further evidence of Respondent’s lack of rights or legitimate interests in the domain name under the Policy. Complainant argues that from around January 2013 to at least October 7, 2013, the <simscale.com> domain name resolved to an inactive (and improperly parked) website. See Complainant’s Exhibits 1 & 3. Based on a screenshot submitted by Complainant, the Panel concludes that the <simscale.com> domain name resolved to a blank website on October 7, 2013. See Complainant’s Exhibit 1. It has previously been held that a respondent’s failure to make an active use of a domain name that is identical to the complainant’s mark is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)). The Panel also notes that a respondent’s “protracted period of inaction” in the development of a disputed domain name is evidence that the respondent lacks rights or legitimate interests in the disputed domain name. Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name). Therefore, as the Panel accepts Complainant’s contentions that the disputed domain name had resolved to the inactive website since January 2013, the Panel concludes that there was a protracted period of inaction in the development of the identical, disputed domain name that lasted to at least October 2013. The Panel concludes that Respondent’s inaction in developing the website resolving from the disputed domain name further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant suggests that Respondent has demonstrated bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv) because the domain name resolves to a commercial search engine that also displays links to unrelated third parties. See Complainant’s Exhibit 2. The Panel recalls that according to a screenshot submitted by Complainant, the disputed domain name resolves to a generic-looking website containing a search box as well as links entitled, “ISA,” “Cape,” “Cooking,” and “Wood,” among others. See id. The Panel notes that previous panels have held that a respondent demonstrates bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where the disputed domain name is obviously connected to the complainant’s mark and is being used for the respondent’s commercial gain. 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). Previous panels have inferred that a respondent is commercially profiting where the disputed domain resolves to a website promoting a variety of hyperlinks that are unrelated to the complainant’s mark. See, e.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Secondly, Complainant next argues that Respondent has also demonstrated bad faith under Policy ¶ 4(a)(iii), because the disputed domain previously resolved to a parked but inactive website. See Complainant’s Exhibits 1 & 3. As discussed above, Complainant argues that a HTML coding listing available for the <simscale.com> domain name suggests that Respondent was utilizing the product “Google AdSense for Domains,” the purpose of which is to generate revenue for parked websites, as of October 7, 2013. See Complainants’ Exhibit 3. At the same time, Complainant submits proof that as of October 7, 2013, the disputed domain name resolved to a blank, inactive website. See Complainant’s Exhibit 1. Based on this evidence, the Panel accepts Complainant’s contention that the at-issue website was parked improperly and resolved to a blank website. The Panel notes that a similar situation was discussed in Ashley Furniture Industries, inc. v. ashleyfurnitures c/o ashleyfurnitures, FA 1374111 (Nat. Arb. Forum March 25, 2011), where the disputed domain named resolved to a website that appeared to be a parked website offering hyperlinks to third parties, but those hyperlinks were inactive. The panel analogized the situation to a domain name resolving to an inactive website, and held that the respondent’s failure to make an active use of the disputed domain name demonstrated the respondent’s bad faith under Policy ¶ 4(a)(iii). See id. Here, the Panel similarly holds that Respondent essentially failed to make an active use of the <simscale.com> domain name, and that this failure is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SIMSCALE mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Accordingly, Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simscale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 3, 2014
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