Web.com Group, Inc v. Menno de Ruiter
Claim Number: FA1502001606609
Complainant is Web.com Group, Inc (“Complainant”), represented by Brian J. Winterfeldt of Katten Muchin Rosenman LLP, Washington, D.C., USA. Respondent is Menno de Ruiter (“Respondent”), Fuengirola, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netsol.domains>, registered with Hosting Concepts B.V. d/b/a Openprovider.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2015; the Forum received payment on February 24, 2015. The Complaint was submitted in both English and Dutch.
On February 25, 2015, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <netsol.domains> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 March 9, 2015, the Forum served the Dutch language Complaint and all Annexes, including a Dutch language Written Notice of the Complaint, setting a deadline of March 30, 2015 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@netsol.domains. Also on March 9, 2015, the Dutch language 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Dutch language Complaint and Commencement Notification, and, absent a Response, concludes the remainder of the proceedings may be conducted in English.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
i. History of Complainant
1. Web.com Group, Inc. (“Web.com”), through its predecessors and/or related companies, adopted and first used the NETSOL and NETWORK SOLUTIONS Marks at least as early as 1996 and 1979, respectively.
2. The <networksolutions.com> domain name was originally registered by Complainant’s predecessor in interest, Network Solutions, Inc., on April 27, 1998, and is currently owned by Complainant (registered in the name of Network Solutions, LLC). Since that time Complainant and its predecessors in interest have continuously associated <networksolutions.com> with Complainant’s Network Solutions business.
3. The following “NETSOL” domain names are currently owned by Complainant (registered in the name of Network Solutions, LLC) and Complainant redirects the domains to <networksolutions.com> for use in connection with the Network Solutions business.
a. <netsol.com>, <netsol.org>, <netsol.biz>, <netsol.name>, <netsol.pro>, <netsol.org.uk>, <netsol.tw>, <netsol.asia>, <netsol.org.nz>, <netsol.gs>, <netsol.com.mx>, <netsol.cm>, <netsol.cc>, <netsol.fm>, <netsol.bz>, <netsol.tc>, <netsol.vg>, <netsol.am>, and <netsol.la>. True and correct printouts of the relevant Whois information for the respective domain names are attached as Exhibit 7.
ii. Complainant’s Extensive and Significant Use of the NETSOL and NETWORK SOLUTIONS Marks in Commerce
1. Network Solutions was founded in the year 1979, long before Respondent’s registration of the Disputed Domain Name, when it coined and adopted NETWORK SOLUTIONS as its trademark and service mark. In addition, Network Solutions also adopted the distinctive NETWORK SOLUTIONS mark as its trade name.
2. After many years of continuous use of the NETWORK SOLUTIONS mark, Network Solutions coined and adopted the NETSOL trademark and service mark in 1996, which is an abbreviated version of the NETWORK SOLUTIONS mark. Network Solutions adopted the NETSOL Mark long before Respondent’s registration of the Disputed Domain Name.
3. Network Solutions is a pioneer in domain name registrations and a leading provider of Internet services, offering a full range of subscription-based services including domain name registration, hosting, website design and management, search engine optimization, online marketing campaigns, local sales leads, social media, mobile products, and e-Commerce solutions. Network Solutions’ services include everything from registering domain names on the Internet, to giving the customer and his business a presence on the Internet with easy-to-use and affordable products and services.
4. With the launch of commercial Internet services with “.com” domain names in late 1991, Network Solutions was appointed as the first ever domain name registrar. The popularity of Network Solutions and its services in the Internet related fields, including the domain name registrations, web hosting, etc., has seen a meteoric upward trend ever since 1991.
5. In 1992, Network Solutions, Inc. (NSI) (Complainant’s predecessor in interest and title) bid on a grant from the United States National Science Foundation (NSF) to develop the domain name registration service for the Internet. In 1993, NSI was granted an exclusive contract by the NSF to be the sole domain name registrar for .com, .net and .org Top-Level Domain (TLD) names. NSI also maintained the central database of assigned names called WHOIS, which is widely used for querying information (e.g., registrant identity and contact information, registrar, IP address, etc.) associated with a domain name. NSI acted as a registrar, registering names directly to end users. Network Solutions’ services were so highly sought that by 1993, Network Solutions had already registered nearly twelve thousand (12,000) domain names worldwide. At the time of the purchase of Network Solutions by Complainant in 2011, Network Solutions managed over 7.3 million domain names. By virtue of this, computer users and users of the Internet generally grew to recognize the NETSOL and NETWORK SOLUTIONS Marks as the provider of Internet and online related services. As a result of this development, the NETSOL and NETWORK SOLUTIONS Marks and trade name have acquired immense reputation and goodwill throughout the world. The NETSOL and NETWORK SOLUTIONS Marks have acquired virtual iconic stature, inter alia, in the field of computer services, the Internet and the world-wide-web.
6. Network Solutions’ status as the first and only domain name registrar in 1993 garnered Network Solutions worldwide acclaim as it provided unparalleled exposure and attention due to the fact that all commercial entities that wished to secure an online presence had to not only know about but also interact with Network Solutions.
7. Network Solutions’ status as the first ever domain name registrar was extensively publicized and reported in the media and brought Network Solutions into the limelight of the international community. By virtue of this solicited and unsolicited publicity that Network Solutions received, immense goodwill and fame accrued to the NETSOL and NETWORK SOLUTIONS Mark. By the end of 1992, the NETWORK SOLUTIONS Marks were already well-known all over the world. Indeed, by the end of 2012, Complainant had over 3 million customers worldwide, accounting for more than USD $491,400,000 in revenue.
8. Over a period of time, Complainant has increased the scope of its services and today is one of the largest providers worldwide of subscription-based Internet and small-business services including, but not limited to, domain name registration, hosting, website design and management, search engine optimization, online marketing campaigns, local sales leads, social media, mobile products, and e-Commerce solutions.
9. Today, millions of users access Complainant’s products and services around the globe each day, and as a result, the world’s public has come to associate the NETSOL and NETWORK SOLUTIONS Marks with products and services of a high and uniform quality.
10. Complainant has made and continues to make substantial investments in developing and marketing its products, services, and cultivating its world-famous NETSOL and NETWORK SOLUTIONS Marks. For example, Complainant has publicized and continues to publicize its NETSOL and NETWORK SOLUTIONS Marks through network and cable television programs, radio broadcasts, print media, including newspapers and periodicals, and through the Internet. Complainant has spent millions of dollars in connection with these forms of advertising.
iii. Respondent’s Infringing Activities and Bad Faith Acts
1. Respondent registered the Disputed Domain Name on October 15, 2014 — many years after the adoption and first use of the famous NETSOL and NETWORK SOLUTIONS Marks.
2. Complainant received a Trademark Claims Notice from the Trademark Clearinghouse on October 16, 2014, informing Complainant of the registration of the Disputed Domain Name.
3. As of January 21, 2015, Respondent owned 177 domain names, of which eighteen (18) domain names, including the Disputed Domain Name, comprised of or incorporating the well-known trademarks of others, for example:
a. <arpa.domains>, <dotster.domains>, <giant.domains>, <netsol.domains>, <verisign.domains>, <bittorrent.tools>, <bittorrent.guide>, <ictrecruitmentagency.com>, <snapchat.guide>, <androidvacature.com>, and <youtubedownloader.tools>.
4. Since at least as early as December 9, 2014, and as recently as the filing of this Amended Complaint, the Disputed Domain Name did not resolve to an active website.
5. On January 9, 2015, in an attempt to amicably resolve this matter, Complainant’s counsel sent a letter to Respondent, via Respondent’s email address at mennox1969@gmail.com, objecting to Respondent’s registration and use of the Disputed Domain Name.
6. On January 11, 2015, Respondent replied to Complainant’s letter, stating that the Disputed Domain Name was registered as part of an automated list generated from software created by Respondent that was designed to generate a list of “best search terms in the AdWords Keywords search engine”. Respondent indicated that he did not personally review the automatically generated list for possible trademarked terms prior to registering the Disputed Domain Name. Respondent indicated a willingness to transfer the Disputed Domain Name to Complainant, provided that Complainant pay Respondent’s outstanding account balance of approximately €5,000, which included costs attributable to other domain name registrations not related to the present dispute.
7. On January 15, 2015, Complainant’s counsel confirmed receipt of Respondent’s January 11, 2015, reply. On the same day, Respondent provided a further response to Complainant’s counsel wherein Respondent included a copy of Respondent’s alleged outstanding invoice. The invoice indicated an outstanding balance of €5,715; only €30.19 of which is attributable to Respondent’s out-of-pocket expense for registration of the Disputed Domain Name (€24.95 plus 21%VAT).
8. In addition to providing Complainant’s counsel with a copy of Respondent’s alleged outstanding invoice, Respondent’s January 15, 2015 reply included the following thinly veiled attempt to blackmail Complainant into paying Respondent’s outstanding invoice balance, which is in excess of Respondent’s documented out-of-pocket expenses:
a. “The faster we move, the less probability it comes in the newspaper and a blamage for NetSol ‘that it is not even able to register netsol.domains’ and that type of gossib which would not devastating but not needed. As people can see this in the whois at donut etc.”
9. Respondent’s registration and use of the Disputed Domain Name, which is identical to the NETSOL Marks and confusingly similar to the NETWORK SOLUTIONS Marks, constitutes a blatant violation of Complainant’s intellectual property rights. In addition, Respondent’s registration of the Disputed Domain Name demonstrates disregard and contempt for Complainant’s legal rights as well as ICANN’s Uniform Domain Name Dispute Resolution Policy.
b) LEGAL GROUNDS
i. Disputed Domain Name is Confusingly Similar to Complainant’s Marks
The Disputed Domain Name is confusingly similar to the NETSOL and NETWORK SOLUTIONS Marks for the reasons set forth below:
1. The Disputed Domain Name is Identical to Complainant’s NETSOL Marks and Confusingly Similar its NETWORK SOLUTIONS Marks
The Disputed Domain Name is identical to the NETSOL Marks, but for the gTLD “.domains.” This minor addition does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See, e.g., Diners Club Int’l Ltd. V. Domain Admin. Ltd. c/o David Halstead, FA 853706 (Nat. Arb. Forum January 15, 2007); Dell, Inc. v. Dell Inc. / Dell Domain Administrative Contact, FA 1108001404052 (Nat. Arb. Forum Sept. 22, 2011) (“gTLDs have also repeatedly been found insignificant and irrelevant to a Policy ¶4(a)(i) confusingly similar analysis”); Dallas Project Holdings Ltd. v. Putra, FA 1368692 (Nat. Arb. Forum March 9, 2011) (stating that “the addition of the sTLD “.asia” does not remove the disputed domain name from the realm of confusing similarity”).
The Disputed Domain Name is confusingly similar to NETWORK SOLUTIONS, as NETSOL is an well-known abbreviated form of the mark. See e.g. winburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow, WIPO Case No. DAU2004-0003 (October 8, 2004) (finding <swin.com.au> confusingly similar as an abbreviation of Complainant’s trademark SWIN BUR NE); Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656 (October 14, 2003) (finding <alfransi.com> to be confusingly similar to ALBANK AL SAUDI AL FRANSI); The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v. Corinne Bali, FA 1590913 (Nat. Arb. Forum December 16, 2014) (finding confusing similarity of <liztaylor.photography> with registered ELIZABETH TAYLOR mark based on Liz being a common abbreviation of Elizabeth).
2. The NETSOL Marks and NETWORK SOLUTIONS Marks Are Arbitrary, Distinctive, Strong, And Famous Trademarks
The famous, distinctive and arbitrary nature of the NETSOL and NETWORK SOLUTIONS Marks support the argument that it is highly unlikely that Respondent could believe that that the domain name would not be confusingly similar to Complainant’s marks. See, e.g., Network Solutions, LLC v. NetworkSolutionz, WIPO Case No. D2005-0450 (June 7, 2005) (citing Complainant’s “widespread recognition over the Internet” to infer bad faith); Network Solutions, LLC v. KerryWeb Enterprises, Inc., WIPO Case No. D2006-1560 (Feb 12, 2007) (citing the “fame of the Complainant’s marks and business” to infer bad faith); Network Solutions, LLC v South EastEnterprise, Inc., WIPO Case No. D2005-1243 (February 6, 2006) (finding Complainant’s NETSOL mark is famous to infer bad faith). Accordingly, this factor supports the conclusion that the Disputed Domain Name is confusingly similar to Complainant’s Marks.
3. The Disputed Domain Name is Combined with a Generic Top-Level Domain Directly Related to Complainant’s Business
The Disputed Domain name is also confusingly similar to the NETSOL and NETWORK SOLUTIONS Marks due to the selection of the “.domains” gTLD, which has an obvious relation to Complainant’s domain name products and services. Combining the NETSOL Mark with a descriptive term is a minor difference that does not diminish the fact that the Disputed Domain Name is confusingly similar to the NETSOL Mark. See Google Inc. v. Daniel Reiner, FA 1392353 (Nat. Arb. Forum Jul. 12, 2011) (finding the “addition of a descriptive term does not differentiate a domain name [googledomains.com] from the mark [GOOGLE] it is infringing upon”).
Indeed, combining a descriptive term such as “domains” with Complainant’s marks, under which Complainant has previously and continuously used in connection with domain name registration services, among others, only enhances the likelihood of confusion between the Disputed Domain Name and the NETSOL and NETWORK SOLUTIONS Marks. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD “.menu”, the combination of the “dunkin” element with the “.menu” gTLD extension adds further to the confusing character of the domain”); McGuireWoods LLP v. Mykhailo Loginov/Loginov Enterprises d.o.o, FA 1594837 (Nat. Arb. Forum January 22, 2015) (“While the addition of gTLDs are generally considered irrelevant to the confusing similarity analysis, the Panel finds that Respondent’s election of the “.lawyer” and “.attorney” descriptive terms do heighten the likelihood of confusion because Complainant’s MCGUIREWOODS mark is used to promote the services of lawyers and attorneys”).
Accordingly, Respondent’s registration of the Disputed Domain Name is confusingly similar to Complainant’s NETSOL and NETWORK SOLUTIONS Marks.
ii. Respondent Does Not Have Legitimate Interests or Rights in the Disputed Domain Name
Respondent has no rights or legitimate interest in the Disputed Domain Name for the following reasons.
1. Respondent is not Commonly Known by the Disputed Domain Name
Respondent is not and has never been commonly known by anything resembling the NETSOL or NETWORK SOLUTIONS Marks, or indeed anything resembling the Disputed Domain Name. Respondent is identified as “Menno de Ruiter” in the Whois database, and provided no indication that he is commonly known by the Disputed Domain Name. Moreover, nothing on the website suggests that Respondent is commonly known by the Disputed Domain Name. Absent conclusive evidence showing that Respondent is or was commonly known by the disputed domain name at the time of registration, Respondent cannot demonstrate that it has any rights or a legitimate interest in respect of the Disputed Domain Name under UDRP ¶4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum Jun. 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its Whois contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶4(c)(ii).”); Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Webworx / Nicholas Hadjipavlou, FA1206001450267 (Nat. Arb. Forum July 31, 2012) (finding that minimal evidence of a “Chris ‘n’ Nick Films” could not support finding that respondent was known as “CNN Films” “at the time Respondent registered the at-issue domain name.”).
Furthermore, Complainant has not authorized Respondent to use the NETSOL or NETWORK SOLUTIONS Marks.
2. Complainant’s Marks Are Internationally Well-Recognized Marks
Given the international fame of the NETSOL and NETWORK SOLUTIONS Marks, Respondent could not be commonly known by the Disputed Domain Name. See Network Solutions, LLC v. XCsquare, WIPO Case No. D2005-1244 (Feb. 6, 2006) (finding respondent’s lack of rights or legitimate interests “[b]y virtue of the legal status of the [NETWORK SOLUTIONS] Trademark as registered trademarks of Complainant in the United States and elsewhere and of Complainant’s uncontroverted contentions about its substantial efforts in promoting its services with the trademark and the substantial size and success of its domain name registration services in the United States and worldwide….”); (Network Solutions, LLC v South EastEnterprise, Inc., WIPO Case No. D2005-1243 (February 6, 2006) (finding same, with respect to both NETWORK SOLUTIONS and NETSOL Marks).
Indeed, when considering the widespread recognition of the NETSOL and NETWORK SOLUTIONS Marks, together with the timing of Respondent’s registration — over thirty years after Complainant began using the NETWORK SOLUTIONS Marks in 1979 and over eighteen years after Complainant began using the NETSOL Marks—it becomes clear that Respondent does not have any rights or legitimate interest in the Disputed Domain Name and registered the Disputed Domain Name in bad faith with the intent to capitalize on the goodwill associated with the NETSOL and NETWORK SOLUTIONS Marks.
3. Respondent Is Not Making a Bona Fide or Legitimate Use of the Disputed Domain Name
Respondent’s passive holding of the Disputed Domain Name, which does not resolve to any active website, does not demonstrate a right or legitimate interest. Indeed, numerous panels have held that passive use or holding of a domain name does not demonstrate a right or legitimate interest in the name. E.g., H-D U.S.A., LLC v. Thomas Gulley d/b/a A-Tech Solutions and Harley Goodies, FA1303001488608 (Nat. Arb. Forum Apr. 18, 2013) (“[T]he domain name is confusingly similar to Complainant’s marks and any future use of such domain name in connection with a functioning site would likely result in a likelihood of confusion”); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); Banco Bilbao Vizcaya Argentaria, S.A. v. Okon, D2004-0245 (WIPO May 31, 2004) (finding that registrant’s “passive use” did not amount to a legitimate interest).
4. Offer to Sell in Excess of Out-of-Pocket Expenses
Lastly, Respondent’s offer to sell the Disputed Domain Name, which incorporates Complainant’s famous marks, further demonstrates that Respondent does not have rights or a legitimate interest in the domain name. UDRP panels have held that offering to sell a domain name in excess of out-of-pocket expenses is evidence of the registrant’s lack of rights or legitimate interests. 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 pursuant to Policy ¶4(a)(ii)).
UDRP panels have further held that registering a domain name that incorporates another party’s mark, with the intention of selling the domain name, is evidence that the registrant has no legitimate interest in the domain name. See Yahoo! Inc. v. SDN Group, FA1201001425454 (Nat. Arb. Forum Mar. 13, 2012) and PrinterOn Corporation v. Premiere Global Services, FA 744560 (Nat. Arb. Forum Aug. 24, 2006) (holding that the Respondent’s offer to sell the domain name at issue demonstrates that the Respondent has no legitimate interest in the domain name at issue).
iii. Respondent has Registered and Used the Disputed Domain Name in Bad Faith
Respondent’s registration and use of the Disputed Domain Name squarely meets the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
1. Respondent is Passively Holding the Disputed Domain Name
Respondent’s passive holding of the Disputed Domain Name, which does not resolve to any active website, indicates his bad faith intent. Numerous panels have found that passive registration and use of a domain name indicates bad faith, such as here where there is no conceivable use to which the domain name could be put that would not be illegitimate. Indeed, as demonstrated above, Respondent had obvious knowledge of the well-known NETSOL and NETWORK SOLUTIONS Marks when he registered the Disputed Domain Name. Thus, his passive holding of the Disputed Domain Name cannot negate his bad faith, but rather reinforces it. E.g., H-D U.S.A., LLC v. Thomas Gulley d/b/a A-Tech Solutions and Harley Goodies, FA1303001488608 (Nat. Arb. Forum Apr. 18, 2013) (“[T]he domain name is confusingly similar to Complainant’s marks and any future use of such domain name in connection with a functioning site would likely result in a likelihood of confusion.”); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (“Respondent’s non-use of the disputed domain name since its registration. . . indicates bad faith registration and use pursuant to Policy ¶4(a)(iii)); Banco Bilbao Vizcaya Argentaria, S.A. v. Okon, D2004-0245 (WIPO May 31, 2004) (finding that registrant’s “passive use” amounted to bad faith due to the fame of the complainant’s mark and lack of evidence of any good faith); Liberty Public Limited Company v. Thomas Guarrera, FA 7000095103 (Nat. Arb. Forum Aug. 7, 2000) (“Passive holding of the domain name with the knowledge that it infringes on a trademark of another is evidence of bad faith.”).
2. Registration of Well-Known Mark in a Descriptive gTLD
Respondent undoubtedly registered the Disputed Domain Name in bad faith with knowledge of the NETSOL and NETWORK SOLUTIONS Marks because these marks are registered worldwide and well-recognized internationally. Indeed, registration of a domain name with knowledge of the trademark owner’s well established rights has been consistently found to constitute bad faith under the UDRP. See, e.g., Yahoo! Inc. v. Yuan Zhe Quan, FA 117877 (Nat. Arb. Forum Oct. 10 2002) (“Because of the established identity of the YAHOO! mark, Respondent had at the very least constructive knowledge of Complainant’s rights in the mark finding respondent’s registration of the Disputed Domain Name.”); Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark, and thus that the respondent registered the domain name in bad faith).
Respondent thus registered the Disputed Domain Name in bad faith under UDRP ¶4(a)(iii). See Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Guowei Hai Gui, FA1426475 (March 3, 2012) (“Based on Complainant’s widespread use of the CNN mark, the Panel infers that Respondent had actual knowledge of Complainant’s mark”); Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding respondents had either actual or constructive knowledge of internationally famous mark at the time of registration and such knowledge constitutes evidence of bad faith).
Furthermore, Respondent’s election to register the Disputed Domain Name in the descriptive .domains new gTLD, which is highly related to the products and services Complainant offers in connection with the NETSOL and NETWORK SOLUTIONS Marks, is further evidence that Respondent registered and is using the Disputed Domain Name in bad faith. See McGuireWoods LLP v. Mykhailo Loginov/Loginov Enterprises d.o.o, FA 1594837 (Nat. Arb. Forum January 22, 2015) (‘Here, the Panel considers Respondent’s election to register the present domain name with the gTLDs “.lawyer” and “.attorney.” The use this suggests supports findings that Respondent knew about Complainant and its legal offerings. The Panel finds that the circumstances support an inference of Respondent’s actual knowledge of Complainant at the time the domain names were registered, and finds additional evidence of bad faith registration pursuant to Policy ¶4(a)(iii)).
Indeed, there can be no other reasonable explanation for Respondent’s registration and use of the Disputed Domain Name.
3. Attempt to Sell Disputed Domain Name in Excess of Out-of-Pocket Expenses
Respondent is offering to sell the Disputed Domain Name. Registering a domain name for the purposes of selling the domain is specifically identified by the UDRP as evidence of the registration and use of a domain name in bad faith. Policy ¶4(b)(i). Indeed, it is well established by numerous UDRP panels that registering a domain name that incorporates another party’s trademark, with the intention of selling the domain name, is sufficient evidence of bad faith in and of itself. See, e.g., Yahoo! Inc. v. SDN Group, FA1201001425454 (Nat. Arb. Forum Mar. 13, 2012); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”).
As discussed above, Respondent’s offer is in excess of his out-of-pocket expenses. Offering to sell a domain name in excess of a registrant’s estimated out-of-pocket expenses is evidence bad faith registration and use of the domain name. 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); Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶4(b)(i)).
4. Respondent Has Engaged in a Patten of Bad Faith Registrations
Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶4(b)(ii) through repeated domain name registrations identical to the registered trademarks of Complainant and others. Respondent’s bad-faith registrations are not limited to domains that infringe upon the NETSOL or NETWORK SOLUTIONS Marks. Respondent has also registered numerous domains in bad faith matching other third party marks with which, upon information and belief, Respondent has no relationship, including, VERISIGN, AUTOTRADER, DOTSTER, and SNAPCHAT. See Exhibit 11. Registering numerous domain names that incorporate other parties’ famous trademarks and preventing the owner from reflecting their mark in the respective domain demonstrates a pattern of bad faith. See General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Thus, there can be no question that Respondent’s numerous registrations of domain names containing Complainant’s and third parties’ marks present an obvious and overarching pattern of infringement. This alone is sufficient for the panel to find Respondent’s registration and use of the Disputed Domain Name to be in bad faith.
5. Attempt to Attract for Commercial Gain and Disrupt Complainant’s Business by Creating Likelihood of Confusion
Registration of a domain name to attract Internet users to disrupt a trademark owner’s business by creating a likelihood of confusion is evidence of registration and use of a domain name in bad faith. See Network Solutions, LLC v. Texas Internet, WIPO Case No. D2005-0456 (June 6, 2005) (“Respondent was and is using the disputed domain names to attract Internet users to its own site where Respondent offered services similar to services offered by Complainant implying an association, relationship, endorsement or affiliation with Complainant that simply does not exist. Thus, the respondent was explicitly disrupting Complainant’s business.”); see also Harrods Ltd. V. Harrods University of Applied n Allied Sciences, WIPO Case No. D2006-0803 (Aug. 31, 2006).
Respondent registered the Disputed Domain Name because NETSOL ranked highly as search term in the AdWords Keywords search engine (See Exhibit 14), which can be attributed to the fame and notoriety associated with the NETSOL and NETWORK SOLUTIONS Marks. The higher a search term is ranked in a search engine the “earlier” it appears on the search results page. Thus, a domain name comprised of a highly ranked search term is likely garner a larger volume of Internet traffic. Accordingly, it is clear that Respondent registered the Disputed Domain Name with the intention of attracting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the NETSOL and NETWORK SOLUTIONS Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent an email indicating he was unable to release the domain to Complainant because he lacked the required codes from his registrar. Respondent had no objection to the domain name being transferred to Complainant.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant uses the NETSOL mark in connection with its Internet services, offering a full range of subscription-based services including domain name registration, hosting, website design and management, search engine optimization, online marketing campaigns, local sales leads, social media, mobile products, and e-Commerce solutions. Complainant registered the NETSOL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No., 2,463,054, registered June 26, 2001). Trademark registrations with a national authority are sufficient to establish a complainant’s rights in a trademark, even when a respondent has registered the disputed domain name in a different country. 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.”). All Complainant must do is to prove Complainant has some rights, not that Complainant’s rights are superior to Respondent’s rights.
Respondent’s domain name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and merely adds the new gTLD “.domains.” Where a respondent has fully incorporated a complainant’s mark and simply added a gTLD to its registered domain name, such a registration is insufficient to overcome a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Therefore, this Panel finds Respondent’s <netsol.domains> domain name is confusingly similar to the NETSOL mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain name. The relevant WHOIS information lists “Menno de Ruiter” as registrant of record. There is no obvious connection between Respondent’s name and the disputed domain name. Respondent has not submitted any evidence in this proceeding to suggest a relationship between the two. Where a respondent has failed to add any evidence for consideration with such a bare bones record, there is no basis to find such a respondent is commonly known by the disputed domain name in question. 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 claims Respondent has made neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. The disputed domain resolves to an error page, which constitutes inactive holding. Respondent does not have control over his domain name because he has not paid the required fees to his registrar (and therefore lacks the codes to control his domain names). Inactive holding does not create rights or legitimate interests under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interest in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has offered the disputed domain for sale to Complainant. Respondent requests “5715 Euro and 37 cents” in compensation, which exceeds what Respondent paid for this particular domain name. This offer demonstrates a lack of rights and legitimate interests. 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has offered to sell the disputed domain name in bad faith pursuant to Policy ¶4(b)(i). Registering a domain name that incorporates another party’s trademark with the intention of selling the domain name is sufficient evidence of bad faith under Policy ¶4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). Therefore, Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶4(b)(i).
Complainant claims Respondent has engaged in a pattern of bad faith registrations. While this might have some facile appeal, such a conclusion is not merited. Under the UDRP, such a respondent must render Complainant unable to reflect its trademark in a domain name. Complainant has 19 registrations reflecting its trademark. Complainant clearly can reflect its trademark in a domain name. This does not constitute bad faith and use under Policy ¶4(b)(ii).
Complainant claims Respondent attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Typically panels typically require an active use for a website to result in a finding of commercial gain. See, e.g., AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding 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). This Panel adopts such reasoning and finds such an inactive registration does not constitute bad faith registration and use under Policy ¶4(b)(iv).
Complainant claims Respondent inactively held the disputed domain name. The <netsol.domains> domain name presently resolves to an error page. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). Respondent’s inactive use of the disputed domain name amounts to bad faith use and registration under Policy ¶4(a)(iii).
Complainant claims that in light of the fame and notoriety of Complainant's NETSOL mark, it is inconceivable Respondent could have registered the <netsol.domains> domain name without actual knowledge of Complainant's rights in the mark. This Panel agrees. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <netsol.domains> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 21, 2015
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