Riverbed Technology, Inc. v. Intdomain / Apexed
Claim Number: FA1410001583571
Complainant is Riverbed Technology, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Intdomain / Apexed (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riverbed.biz>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 7, 2014; the National Arbitration Forum received payment October 7, 2014.
On October 8, 2014, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <riverbed.biz> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@riverbed.biz. Also on October 8, 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 October 30 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following allegations in this proceeding:
i. Complainant owns the RIVERBED mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,931,934, registered March 8, 2005).
ii. Complainant uses the RIVERBED mark in connection with its business in location-independent computing.
iii. Complainant operates online through <riverbed.com>.
i. Policy ¶ 4(a)(i)
1. The <riverbed.biz> domain name is identical to Complainant’s RIVERBED mark because Respondent has fully incorporated the mark into the disputed domain name.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <riverbed.biz> domain name. Respondent is neither licensed nor authorized to use the RIVERBED mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to divert Internet users to a commercial website that displays links to Complainant’s competitors, all for Respondent’s own commercial gain.
5. Respondent offered to sell the disputed domain name to Complainant.
iii. Policy ¶ 4(a)(iii)
1. Complainant uses the disputed domain name to divert Internet users to a website that contains links to those who would compete with Complainant, all for Respondent’s own commercial gain.
2. Respondent had actual or constructive knowledge of Complainant’s rights in the mark, due to Complainant’s vast amount of trademark registrations throughout the world.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark;
Respondent has no rights to or legitimate interests in Complainant’s mark or the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant uses the RIVERBED mark in connection with server and networking software to improve computing performance and data storage. Complainant claims to own the RIVERBED mark through its various trademark registrations with the USPTO (e.g., Reg. No. 2,931,934, registered March 8, 2005). Complainant argues that such registrations are sufficient to establish rights in the RIVERBED mark pursuant to Policy ¶ 4(a)(i) requirements, even though Respondent is located in Austria. Complainant’s argument is supported by previous UDRP decisions. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, although the record indicates that Respondent operates in Austria, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <riverbed.biz> domain name is identical to Complainant’s RIVERBED mark because Respondent fully incorporated the mark in in its entirety within the disputed domain name. The Panel also notes that the disputed domain name differs from the mark only by affixation of the generic top-level domain (“gTLD”) “.biz.” Previous panels have generally found that domain names identical to a complainant’s mark are not distinguished under Policy ¶ 4(a)(i) by the addition of a different gTLD, which is irrelevant to this analysis. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark). As such, the Panel finds that Respondent’s <riverbed.biz> domain name is identical to Complainant’s RIVERBED mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 urges that Respondent lacks rights or legitimate interests in the disputed domain name because, among other reasons, Respondent is not commonly known by the <riverbed.biz> domain name. The Panel notes that the WHOIS information identifies “Intdomain” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the RIVERBED mark. The Panel recalls that Respondent failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to permit an inference otherwise, the Panel finds that Respondent is not commonly known by the <riverbed.biz> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent currently uses the disputed domain name to direct Internet users to a website that contains links to some of Complainant’s competitors, for Respondent’s own commercial gain. See Complainant’s Ex. F. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name in such use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Further, Complainant notes that Respondent attempted to sell the disputed domain name to Complainant for $1,590.00. See Complainant’s Ex. E. Generally, panels treat such actions as evidence that the respondent lacks rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. First, Complainant urges that Respondent is using the disputed domain name to divert Internet users to a website that contains a variety of links, some of which are in direct competition with Complainant. The Panel recalls that the disputed domain name resolves to feature links such as “Bandwidth Monitoring Tool,” “Brocade and Utilization,” and “Mainframe Developer Tools.” See Complainant’s Ex. F. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), in which the panel wrote, “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” The Panel agrees that the links promoted at the disputed landing page are sufficiently competitive with Complainant’s own offerings related to computer performance and networking, and the Panel finds evidence of Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent diverts Internet users for its own commercial gain via the aforementioned competitive links. See Complainant’s Ex. F. Previous panels have not hesitated to find evidence of bad faith in such behavior pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Consequently, this Panel agrees that Respondent’s current use of the website is evidence of bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that due to Complainant’s extensive trademark registrations around the world, it is inconceivable that Respondent registered the disputed domain name without actual or constructive knowledge of Complainant’s rights in the RIVERBED mark. Although panels do not generally find constructive notice sufficient to support findings of bad faith, the Panel finds here that Respondent’s use shows actual knowledge of Complainant's mark and rights and therefore this Panel finds that Respondent registered the disputed domain name in bad faith under a Policy ¶ 4(a)(iii) analysis. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that Respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <riverbed.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 10, 2014.
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