Parasoft Corporation v. M Adam a/k/a
PakCommerce
Claim Number: FA0604000681241
PARTIES
Complainant is Parasoft
Corporation (“Complainant”) represented by David J. Steele, of Christie,
Parker & Hale LLP, 3501
Jamboree Rd., Suite 6000, Newport Beach, CA, 92660. Respondent is M Adam a/k/a PakCommerce, Houston, TX
(“Respondent”), 535 Prairie St., Houston, TX, 77042.
The domain name at issue is <parasoft.us>,
registered with Enom, Inc.
PANEL
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 18, 2006.
On April 19, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <parasoft.us>
domain name is registered with Enom, Inc. and that Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On April 20, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 10, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2006, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Sandra
J. Franklin 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <parasoft.us> domain name is identical to Complainant’s PARASOFT mark.
2.
Respondent does not have any rights or legitimate
interests in the <parasoft.us> domain name.
3.
Respondent registered and used the <parasoft.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Parasoft Corporation, was
founded in 1987 and is currently a successful software company with more than
10,000 customers worldwide. Complainant
has registered the PARASOFT mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,004,140 issued October 1, 1996). Complainant also maintains an Internet
presence at the <parasoft.com> domain name in connection with its
business.
Respondent registered the <parasoft.us>
domain name on October 24, 2003. Internet users who access this domain name
are directed to Respondent’s commercial website, which features links to
products and services in competition with Complainant.
DISCUSSION
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 the 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 (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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <parasoft.us> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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) (holding that 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”).
There is no evidence to show that Respondent is the owner or beneficiary of a trade or service mark identical to the <parasoft.us> domain name pursuant to Policy ¶ 4(c)(i). See Meow Media nc. v. John Basil a/k/a American Software Factory Corp., Inc., FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Furthermore,
Respondent is using the <parasoft.us>
domain name, which is identical to Complainant’s PARASOFT mark, to
divert consumers to a website with links to Complainant’s competitors,
presumably in return for payment in the form of click-through fees. Such use of the disputed domain name for
commercial gain does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iv). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of
the complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Complainant asserts
that Respondent is not commonly known by the <parasoft.us> domain name, and Respondent has not answered
the Complaint with any information indicating that it is commonly known by this
name. Complainant also asserts that
Respondent is not authorized to use Complainant’s marks. There is no information in the WHOIS database
implying that Respondent is commonly known by the <parasoft.us> domain name.
Therefore, Respondent has not established rights or legitimate interests
in the <parasoft.us> domain
name pursuant to Policy ¶ 4(c)(iii). See 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); see
also 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <parasoft.us> domain name, which is identical to Complainant’s PARASOFT mark, to operate a website containing links to Complainant’s competitors. The Panel infers that Respondent receives click-through fees for misleading consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Respondent’s domain name incorporates Complainant’s mark in
its entirety, and Respondent’s website contains several links to websites
offering products and services in competition with Complainant. Respondent’s use of Complainant’s mark to
divert Internet users to Complainant’s competitors amounts to disruption of
Complainant’s business under Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent has diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the <parasoft.us> domain
name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 30, 2006
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