Science Applications International Corporation v. WhoisGuard a/k/a Whois Guard Protected
Claim Number: FA0605000707100
Complainant is Science Applications International Corporation (“Complainant”), represented by Douglas A. Rettew, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is WhoisGuard a/k/a Whois Guard Protected (“Respondent”), 8939 S. Sepulveda Blvd., Westchester, CA 90045.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <saicstock.com>, registered with Enom, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 17, 2006.
On May 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <saicstock.com> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 2006 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@saicstock.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 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 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 <saicstock.com> domain name is confusingly similar to Complainant’s SAIC mark.
2. Respondent does not have any rights or legitimate interests in the <saicstock.com> domain name.
3. Respondent registered and used the <saicstock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Science Applications International Corporation (“Complainant”) is a Fortune 500 research and engineering company that was founded in 1969. Complainant has used its trademark, SAIC, since at least 1984, and holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SAIC mark (Reg. No. 1,440,254 issued May 19, 1987). Complainant announced its public offering of stock in September, 2005.
Respondent registered the <saicstock.com> domain name on January 17, 2006. Respondent’s disputed domain name resolves to a website featuring links to third-party websites that offer goods and services in direct competition with Complainant.
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.
The Panel finds that Complainant’s federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the SAIC mark. See 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.”); see also 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.”).
Respondent’s <saicstock.com> domain name is confusingly similar to Complainant’s SAIC mark pursuant to Policy ¶ 4(a)(i), because it contains Complainant’s entire mark and merely adds the generic term “stock.” Panels have concluded that the addition of a generic term to complainant’s mark in a domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). In this case, Respondent chose the word “stock” as an addition to Complainant’s SAIC mark, and did so a few months after Complainant announced that it would be selling stock publicly for the first time. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found that Respondent’s domain name was confusingly similar as the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <saicstock.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does not 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”).
Respondent’s failure to answer the complaint raises a presumption that Respondent has no rights or legitimate interests in the <saicstock.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. There is also no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) the panel found that the respondent was not commonly known by the disputed domain names as the respondent was doing business under unrelated names. 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). Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that the Respondent is not commonly known by the disputed domain name.
The evidence on record indicates that Respondent is
using the disputed domain name to operate a website which provides links to
third-party websites that offer goods and services in direct competition with
Complainant. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel found
that Respondent’s use of the disputed domain name to divert customers who were
looking for products related to the famous SEIKO mark, to a website unrelated
to the mark was not a bona fide offering of goods or services under
Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). 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). As such, the Panel finds
that the Respondent’s use of the disputed domain name is neither a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor a commercial or fair use under
Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <saicstock.com> domain name
resolves to a website which provides links to third-party websites that compete
with Complainant’s business. Thus, the
Panel finds that Respondent registered and used Complainant’s mark with the
intent to disrupt Complainant’s business.
Such conduct is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also Puckett, Individually 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)).
Moreover, as Respondent
registered and is using the disputed domain name to divert Internet users
seeking information on Complainant to Respondent’s website and the websites of
Complainant’s competitors via links on Respondent’s website. Consequently the Panel finds that Respondent
registered and is using the disputed domain name with the intent to divert
Internet users and thus benefit commercially through click-through fees. Therefore, the Panel finds that Respondent’s
conduct evidences bad faith registration and use of the disputed domain name
under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of the complainant); see
also AltaVista Co. v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
Additionally, the
Respondent has listed on the <saicstock.com> domain name’s
website that the domain name is for sale.
In Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003), the panel found that the respondent’s general offer of the disputed
domain name registration for sale established that the domain name was
registered in bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”). Accordingly, the Panel finds that the
Respondent’s offer to see the disputed domain name constitutes bad faith under
Policy ¶ 4(b)(i).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saicstock.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 20, 2006
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