NATIONAL ARBITRATION FORUM
URS APPEAL DETERMINATION
Wolfram Group LLC v. Andrew Davis et al.
Claim Number: FA1404001554143
DOMAIN NAME
<wolfram.ceo>
PARTIES
Appellant: Every CEO Andrew Davis of Port of Spain, II, Trinidad And Tobago | |
Appellee: Wolfram Group LLC of Champaign, IL, United States of America | |
Appellee Representative: Wolfram Group LLC
Noah K Tilton of Champaign, IL, United States of America
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REGISTRIES and REGISTRARS
Registries: CEO Registry | |
Registrars: 101Domain, Inc. |
EXAMINER
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 Examiner in this proceeding. | |
Richard W. Hill, as Examiner |
PROCEDURAL HISTORY
Appeal Submitted: May 1, 2014 | |
Appellee reply submitted: May 2, 2014
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RELIEF SOUGHT
Appellant requests a de novo review of the proceedings and that the previous Determination be overruled. Appellant requests that the previous finding that the Complaint was brought in an abuse of the proceeding or that it contained material falsehoods be set aside as an abuse of the Examiners discretion, or because the finding was arbitrary or capricious.[RequestVoidAbuseNoEncode] |
STANDARD OF REVIEW
De novo review as to if the Complainant met its burden by clear and convincing evidence. Abuse of discretion for findings of abuse or material falsehood.[RequestVoidAbuseNoEncode] |
FINDINGS and DISCUSSION
Findings of Fact: |
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Discussion: |
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URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended. The Appellant has identified specific grounds on which it believes the previous Determination was incorrect. As the URS Appeal Review is de novo, the Examiner makes the following de novo findings for each URS factor. |
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The Complainant has a valid trademark for the term WOLFRAM, and this mark is well known in the ICT industry and among Internet users. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant As the first examiner correctly noted, the Respondent's name is not Wolfram and he does not claim to be directly associated with any person called Wolfram. The Respondent states that he registered many first names, with the intent or creating a future website containing a large directory of CEOs, Business Owners and leaders named Wolfram. But the first name in question is a well-known mark. Thus, this Examiner agrees with the previous examiner: he is not persuaded by the arguments made by the Respondent and finds that the Respondent does not have rights or legitimate interest in the disputed domain name
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The Appellant states: "The examiner misrepresented my statement: 'removed possibilities of confusion with Trademark'. My statement simply meant: IN CASE any of my other .CEO Domains are similar to an existing Trademark, I removed the possibility of that Domain creating confusion. In NO way my statement suggests I was aware of the Wolfram Trademark. I was NOT aware of the Wolfram Company or its Trademark before this case. I got the Wolfram+Mittal names from a list of common names. My .CEO Domains were registered in Bulk/Internally by my Domain Registrar, using a List I gave them. I never Saw/Signed any Wolfram/Mittal Trademark claim. Appellant has not uploaded information in support of its contentions. (URS 12.2)" The Complainant's mark is well known, thus the Appellant either knew of it or should have known of it. As the first examiner stated, the Complainant notes that the mark has been used over 25 years, and the the results of multiple search engine for "Wolfram.ceo" leads directly to the Complainant. Further, this examiner agrees with the previous examiner to the effect that the Applellant's holding of a large portfolio of domain names is an indicia of bad faith, particularly considering that, as seen in this case, an identical trademark owned by a third party is involved. The Appellant does not address this argument, much less rebut it. Further, in his initial filing, the Appellant admits that some of his domain names are trademarks, and he admits that, at present, he is aware that Wolfram is a mark, because he has added a disclaimer to his web site to the effect that it is not related to the Complainant. The disclaimer is not sufficient to overcome the first impression confusion caused by the disputed domain name. The Appellant refers to URS Procedure 12.2. But this provision provides for a limited right to introduce new evidence, which neither party has done in this case. Contrary to what the Appellant implies, the Complainant did provide adequate information in support of its contentions in the Complaint.
DETERMINATION
After reviewing the parties submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
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Availability of Determinations:
The Appeal Examiner determines that the previous Determination shall remain available online along with this Appeal Determination.
Richard W. Hill
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