Persistent Systems, LLC v. Tony Routledge
Claim Number: FA1612001708877
Complainant is Persistent Systems, LLC (“Complainant”), represented by Steven I. Wallach of Gerard Fox Law, P.C., New York, USA. Respondent is Tony Routledge (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <waverelay.net>, <waverelay.solutions>, <waverelay.systems>, and <waverelay6.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 21, 2016.
On December 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <waverelay.net>, <waverelay.solutions>, <waverelay.systems>, and <waverelay6.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@waverelay.net, postmaster@waverelay.solutions, postmaster@waverelay.systems, postmaster@waverelay6.com. Also on December 28, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Persistent Systems, LLC, is a manufacturer and seller of wireless networking systems. In connection with this business, Complainant uses the WAVE RELAY mark to provide and promote mobile ad hoc networking (“MANET”) products. Complainant has rights in the WAVE RELAY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,259,614, registered Dec. 18, 2012). See Compl., at Ex. 7. The disputed domain names are identical or confusingly similar as they consist of the mark in its entirety—less the space—with an appended top-level domain (“TLD”). Respondent’s <waverelay6.com> additionally adds the numeral “6.”
Respondent has no rights or legitimate interests in <waverelay.net>, <waverelay.solutions>, <waverelay.systems>, or <waverelay6.com>. Respondent is not commonly known by the disputed domain names, nor is Respondent an agent or licensee of Complainant. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a website which mirror the website of Respondent, who is a direct competitor of Complainant.
Respondent registered and has used the disputed domain names in bad faith. Respondent is using the disputed domain names to confuse and attract Internet users for commercial gain. Additionally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the WAVE RELAY mark, as Respondent is a former customer of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names were created August 16, 2015
C. Additional Submissions
Although there are additional submissions in the record, the Panel finds them to be irrelevant or without merit. One email from the Respondent requests more time in which to file a response as the complaint apparently was received during their “holiday season and [Respondent] is just returning to work.” The request for extension of time in which to file a response is denied. Vacation is not an excuse for failing to respond to this matter.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademarks; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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(f), 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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that all four disputed domain names here are controlled by the same entity. Complainant offers as evidence the fact that all four domains were created on the same day and all resolve to identical websites which mirror the website for Respondent’s company. See Compl., at Exs. 10, 13-16. As such, the Panel finds that all four disputed domain names are controlled by the Respondent and it is appropriate proceed in this matter against the named Respondent.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark, WAVE RELAY. Complainant has adequately plead its rights and interests in and to this trademark. This is a valid and subsisting trademark and its registration and use predates the registration of the disputed domain names.
Respondent arrives at the disputed domain names by adopting the trademark in its entirety and appending a top level domain name or a numeral. This is inadequate to distinguish the disputed domain names from the registered trademark.
As such, the Panel fins that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the WAVE RELAY mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.
The WHOIS information of record for <waverelay.net>, <waverelay.solutions>, and <waverelay.systems> identifies Respondent as “Tony Routledge,” while the registrant for <waverelay6.com> is listed as “Domains By Proxy, LLC.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. Complainant maintains that Respondent does not have a license or authority to register the disputed domain names.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
Respondent’s lack of rights or legitimate interests in the disputed domain names is further evinced by their failure to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, each of the disputed domain names resolves to a mirror of the website of Respondent’s company, which is a direct competitor of Complainant’s business. See Compl., at Exs. 10, 13–16. Use of a domain name to resolve to competing commercial website is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC., FA 1581942 (FORUM Nov 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent apparently attempts to attract potential customers of Complainant and divert them to a copy of Respondent’s website for commercial gain. Use of a domain name to confuse and attract Internet users for commercial gain indicates bad faith as described in Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Each of the disputed domain names resolves to a mirror of Respondent’s website. See Compl., at Attached Exs. 10, 13–16. The Panel finds that Respondent has registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that Respondent had actual knowledge of Complainant's rights in the WAVE RELAY mark. Complainant argues that Respondent was previously a customer of Complainant and has attempted to file an Australian trademark for the WAVE RELAY mark in retaliation for a payment dispute, indicating that Respondent had actual knowledge of Complainant's mark and rights. See Compl., at Attached Exs. 26–27. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Therefore, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <waverelay.net>, <waverelay.solutions>, <waverelay.systems> and <waverelay6.com> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 3, 2017
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