Segware do Brasil LTDA. and Segware USA, LLC v. Vinay Shan
Claim Number: FA1803001776315
Complainant is Segware do Brasil LTDA. and Segware USA, LLC (“Complainant”), represented by Luiz Henrique Bonatti. Respondent is Vinay Shan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <segware.com>, registered with BigRock Solutions Ltd.
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 March 16, 2018; the Forum received payment on March 16, 2018.
On March 16, 2018, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <segware.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd 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 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 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@segware.com. Also on March 27, 2018, 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 April 20, 2018, 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a leading security technology and alarm monitoring business in Brazil and the United States. Complainant has rights in the SEGWARE mark through its trademark registration with the Brazilian National Institute of Intellectual Property (“INPI”) (e.g., Reg. No. 905,853,440, registered Nov. 24, 2015). Respondent’s <segware.com> domain name is identical to Complainant’s SEGWARE mark because Respondent merely adds a “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <segware.com> domain name. Respondent is not authorized or permitted to use Complainant’s SEGWARE mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as the disputed domain name resolves to a dynamic parking page with pay-per-click hyperlinks.
Respondent registered and is using the <segware.com> domain name in bad faith. Respondent attempted to sell the disputed domain name for $24,508.88 to Complainant, but has since ceased all communication with Complainant. Additionally, Respondent attempts to confuse users seeking Complainant by registering a confusingly similar disputed domain name which resolves to a parked website with competing, pay-per-click hyperlinks. Furthermore, Respondent’s registration of the disputed domain name two years after Complainant registered its <segware.com.br> domain name indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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(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.”).
Complainant claims rights in the SEGWARE mark through its trademark registration with the Brazil Instituto Nacional da Propriedade Industrial (“INPI”). Registration with a governmental trademark agency, such as the Brazil INPI, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Complainant provided a copy of its trademark registration with the INPI for the SEGWARE mark (e.g., Reg. No. 905,853,440, registered Nov. 24, 2015). Complainant has rights in the SEGWARE mark through its trademark registration with the INPI under Policy ¶4(a)(i).
Complainant does not make any claim regarding common law rights, probably because Complainant’s headquarters is in a civil law country (although it has a United States subsidiary which was formed on June 12, 2012 who is a party to this proceeding).
Complainant claims Respondent’s <segware.com> domain name is identical to Complainant’s SEGWARE mark because Respondent merely added a gTLD to the mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent’s disputed domain name is identical to Complainant’s SEGWARE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent lacks rights and legitimate interests in the <segware.com> domain name. Respondent is not authorized or permitted to use the SEGWARE mark and is not commonly known by the disputed domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The relevant WHOIS information identifies Respondent as “Vinay Shan / Vinay Shan.” There is no obvious connection between Respondent’s name and the disputed domain name. The Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not using the <segware.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a parked website with dynamic pay-per-click advertisements and hyperlinks. This use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provided a screenshot of the disputed domain name which resolves to a website with a variety of hyperlinks related to Complainant’s business (e.g., “Monitorament de Alarmes, E War.”). Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <segware.com> domain name in bad faith because Respondent attempted to sell the disputed domain name to Complainant for an amount exceeding Respondent’s documented out of pocket costs directly related to the domain name. Attempting to sell a disputed domain for more than documented out-of-pocket costs relating to the domain name constitutes bad faith registration and use under Policy ¶4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (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). Respondent offered to sell the disputed domain name for $24,508.88. No explanation was given for how that amount was calculated. Respondent ceased all communications with Complainant when Complainant tried to negotiate a lower price. Respondent’s attempts to sell the disputed domain name for more than its out-of-pocket costs constitutes bad faith under Policy ¶4(b)(i).
The primary concern for this Panel is Respondent registered the disputed domain name substantially BEFORE Complainant registered its mark in Brazil. The question is whether or not Respondent specifically targeted Complainant by registering the domain name. The answer is clearly not, because there was no evidence Respondent even knew of Complainant’s existence when the domain name was registered on April 6, 2003. However, Complainant was clearly part of a class Respondent anticipated would eventually come to pass-those who had a registered trademark identical (or substantially similar) to the disputed domain name and wanted to buy it. Respondent had this intent when Respondent registered the domain name, even though Respondent probably didn’t even know of Complainant’s existence in 2003. Therefore, Respondent registered and used the disputed domain name in bad faith.
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 <segware.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 24, 2018
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