WebEx Communications, Inc. v. Keith Gill
Claim Number: FA0507000508951
Complainant, WebEx Communications, Inc. (“Complainant”),
is represented by Johanna F. Sistek,
of Dorsey & Whitney LLP, 850
Hansen Way, Suite 200, Palo Alto, CA 94304.
Respondent is Keith Gill (“Respondent”),
11 East Orange Grove Rd #2324, Tucson, Arizona 85704.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <webexseminar.com>,
registered with Wild West Domains, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 8, 2005.
On
July 6, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <webexseminar.com>
is registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
July 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 28,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@webexseminar.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration 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.”
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 assertions:
1. Respondent’s <webexseminar.com> domain name is confusingly similar to
Complainant’s WEBEX mark.
2. Respondent does not have any rights or
legitimate interests in the <webexseminar.com>
domain name.
3. Respondent registered and used the <webexseminar.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
WebEx Communications, Inc., provides software for transmitting information over
the Internet and services for online teleconferencing and
video-conferencing. Complainant’s
products and services allow customers to schedule, conduct, and monitor online
meetings and seminars among remote users.
Due to Complainant’s extensive use and promotion of its services, the
WEBEX mark has acquired substantial goodwill and is recognized as identifying
online services and support software originating from Complainant.
Complainant has
been using its WEBEX mark since June 1996.
Complainant also holds numerous trademark registrations for the WEBEX
mark with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,102,292 issued
September 30, 1997; Reg. No. 2,527,930 issued January 8, 2002; Reg. No.
2,480,416 issued August 21, 2001).
Respondent
registered the <webexseminar.com>
domain name on April 3, 2005. The
disputed domain name resolves to a website which displays “WEBEX SEMINAR” on
top of the page and states that the website is “Your Source For Online Voice
and Web Conferencing.” The website also
incorporates a frame on the left-hand side linking to Complainant’s various
services, such as “WebEx Access Anywhere” and “WebEx Meeting Center.”
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.”
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.”).
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.
Complainant’s
registrations for its WEBEX mark with the USPTO are sufficient to establish a prima facie case of rights in the
mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD
mark.”). Respondent’s failure to submit
a response leaves undisputed the presumption that Complainant has rights in the
mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.”). The Panel finds that
Complainant has established rights in the mark for purposes of Policy ¶
4(a)(i).
Complainant
argues that Respondent’s <webexseminar.com>
domain name is confusingly similar to its WEBEX mark. The disputed domain name incorporates Complainant’s mark in its
entirety and adds the generic term “seminar,” which also relates to the
services Complainant provides. The
Panel holds that the addition of the term “seminar” is not sufficient to
distinguish the disputed domain name from Complainant’s mark. See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also L.L.
Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000)
(finding that combining the generic word “shop” with the complainant’s
registered mark “llbean” does not circumvent the complainant’s rights in the
mark nor avoid the confusing similarity aspect of the ICANN Policy).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<webexseminar.com> domain
name. Complainant’s assertion
establishes a prima facie case and
shifts the burden to Respondent to demonstrate that it does have rights or
legitimate interests in the domain name.
See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”). The Panel will analyze
whether Respondent could meet its burden of establishing rights or legitimate
interests for purposes of Policy ¶4(a)(i).
Complainant
argues that Respondent is not commonly known by the disputed domain name. In fact, Respondent’s WHOIS information
indicates that Respondent is known as “Keith Gill.” Because Respondent did not submit a response, the Panel accepts
as true Complainant’s allegation that Respondent is not commonly known by the
disputed domain name. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption
that the complainant’s allegations are true unless clearly contradicted by the
evidence). The Panel concludes that
because Respondent is not commonly known by the disputed domain name, he has
not established rights or legitimate interests under 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.”); see
also Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant
asserts that Respondent is using the disputed domain name to divert Internet
users away from Complainant’s website to Respondent’s competing website. Without a response from Respondent, the
Panel accepts Complainant’s assertions as true. See Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”). The Panel holds that such diversion does not
constitute a bona fide offering of
goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i)
and (iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating
that the respondent’s use of the complainant’s entire mark in domain names
makes it difficult to infer a legitimate use); see also Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent’s website features links to sites that compete with the
services Complainant provides. The
Panel holds that the use of a confusingly similar domain name to offer services
that compete with those of Complainant is disruption and constitutes bad faith
use and registration under Policy ¶ 4(b)(iii).
See Lambros
v. Brown, FA 198963 (Nat. Arb. Forum Nov.
19, 2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); see also
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003)
(“Respondent registered a domain name confusingly similar to Complainant's mark
to divert Internet users to a competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant
further argues that Respondent is capitalizing on the confusing similarity of
the disputed domain name by featuring links to both Complainant’s website and
those of Complainant’s competitors. The
Panel holds that such use constitutes bad faith use and registration under
Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”).
Complainant
argues that Respondent’s use of the disputed domain name creates initial
interest confusion. The disputed domain
name resolves to a website that displays Complainant’s mark and contains links
to Complainant’s services. The Panel
holds that such use is likely to create confusion among Internet users by
leading them to believe that the website is sponsored by Complainant. The Panel concludes that such use
constitutes bad faith use and registration for purposes of Policy ¶
4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000)
(finding that the respondent’s expected use of the domain name
<redbull.org> would lead people to believe that the domain name was
connected with the complainant, and thus is the equivalent to bad faith use); see also Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding registration in bad faith based where there is
no reasonable possibility, and no evidence from which to infer that the domain
name was selected at random since it entirely incorporated the complainant’s
name).
Additionally,
the Panel holds that the content of Respondent’s website implies that
Respondent is leading the public to believe that it is Complainant. The Panel concludes that such
misrepresentation is evidence of bad faith use and registration for purposes of
Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536
(Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant supported a
finding of bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the
domain name at issue to resolve to a website at which Complainant’s trademarks
and logos are prominently displayed.
Respondent has done this with full knowledge of Complainant’s business
and trademarks. The Panel finds that this conduct is that which is prohibited
by Paragraph 4(b)(iv) of the Policy.”).
The
Panel finds that Complainant has satisfied 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 <webexseminar.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
August 15, 2005
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