The IntelliCAD Technology Consortium v. Graham Evans
Claim Number: FA1710001752450
Complainant is The IntelliCAD Technology Consortium (“Complainant”), represented by Shawn M Lindsay, Oregon, USA. Respondent is Graham Evans (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intellicad.net>, registered with GoDaddy.com, 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 Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 9, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <intellicad.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@intellicad.net. Also on October 11, 2017, 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 November 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, The IntelliCAD Technology Consortium, is a software development company. Complainant uses the INTELLICAD mark to promote its products and services. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,654,192, registered Aug. 20, 1991). See Compl. Ex. A.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <intellicad.net> domain name. Complainant has not licensed or otherwise authorized Respondent to use its INTELLICAD mark in any fashion. Respondent is not using the <intellicad.net> domain name in connection with any bona fide offering of goods or services, or legitimate non-commercial or fair use. Instead, Respondent attempts to pass itself off as Complainant or Complainant’s affiliate for the purpose of diverting internet users from Complainant’s site to Respondent’s site.
Respondent registered and is using <intellicad.net> domain name in bad faith. Respondent has intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or comments, presumably for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in software development.
2. Complainant registered the INTELLICAD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,654,192, registered Aug. 20, 1991).
3. Respondent registered the <intellicad.net> domain name on October 14, 2017.
4. Respondent uses the domain name to pass itself off as Complainant or Complainant’s affiliate for the purpose of diverting internet users from Complainant’s website to Respondent’s website.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is a software development company. Complainant uses the INTELLICAD mark to promote its products and services. Complainant submits that it registered the INTELLICAD mark with USPTO (e.g., Reg. No. 1,654,192, registered Aug. 20, 1991). See Compl. Ex. A. The general consensus among panels is that registrations with USPTO are sufficient to show rights in a mark. Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel determines that Complainant’s registration with USPTO is sufficient to show rights in the INTELLICAD mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s INTELLICAD mark. Complainant argues that Respondent’s <intellicad.net> domain name is identical or confusingly similar to the INTELLICAD mark. Complainant relies on the ground that if a comparison is made between the domain name and the trademark it will be seen that the two are identical. The Panel agrees that this is the correct approach and that it is well established in many UDRP decisions. As such, the Panel holds that the <intellicad.net> domain name is confusingly similar to Complainant’s INTELLICAD mark under Policy ¶ 4(a)(i).
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 (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 (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 mark and has used it in its entirety in the domain name;
(b)Respondent registered the <intellicad.net> domain name on October 14, 2017.
(c) Respondent uses the domain name to pass itself off as Complainant or Complainant’s affiliate for the purpose of diverting internet users from Complainant’s website to Respondent’s website;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the <intellicad.net> domain name. WHOIS information associated with this case identifies Respondent as “Graham Evans.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003); the Panel so finds;
(e)Complainant avers it has not licensed or otherwise authorized Respondent to use its INTELLICAD mark in any fashion. Complainant contends that Respondent is not using the <intellicad.net> domain name in connection with any bona fide offering of goods or services, or legitimate non-commercial or fair use. Instead, Complainant asserts that Respondent attempts to pass itself off as Complainant or Complainant’s affiliate for the purpose of diverting internet users from Complainant’s site to Respondent’s site. “A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.” H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017). As such, the Panel finds that Respondent does not have rights or legitimate interests in the <intellicad.net> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
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.
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 maintains that Respondent registered and is using the <intellicad.net> domain name in bad faith because Respondent has intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or comments, presumably for commercial gain. "While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion." Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002). Additionally, “[r]egistration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.” Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003). Therefore, the Panel finds that Respondent registered and is using the <intellicad.net> domain name in bad faith.
Secondly, 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 INTELLICAD mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
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 <intellicad.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 6, 2017
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