Science Applications International Corporation v. James Mulhern
Claim Number: FA0605000707130
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 James Mulhern (“Respondent”), 14562 Jansbury St., Gainesville, VA 20155, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info>, registered with Go Daddy Software.
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.
Honorable Paul A. Dorf (Ret.) 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, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names are registered with Go Daddy Software and that Respondent is the current registrant of the names. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 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@saicinc.com, postmaster@saicinc.net, postmaster@saicinc.biz and postmaster@saicinc.info 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 Honorable Paul A. Dorf (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names are confusingly similar to Complainant’s SAIC mark.
2. Respondent does not have any rights or legitimate interests in the <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names.
3. Respondent registered and used the <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Science Applications International Corporation (“SAIC”), holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SAIC mark (i.e., Reg. No. 1,440,254 issued May 19, 1987; Reg. No. 2,876,009 issues August 24, 2004). Complainant uses the SAIC mark in connection with a variety of goods and services, including scientific research and consulting, computer and telecommunications design, engineering, consulting and data management, management and business consulting services and training services.
Respondent registered the <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names on December 13, 2005. Respondent’s registration closely followed the widely publicized announcement that Complainant would become a publicly traded company, adopting the new name SAIC, Inc. Respondent is using the disputed domain names to redirect Internet users to Respondent’s website featuring links to third-party websites offering unrelated goods and services, such as travel services, financial services, dating services, computers and flowers. Presumably, Respondent receives pay-per-click fees from these links.
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 has established rights in the SAIC mark through
registration with the USPTO. 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 <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names are confusingly similar to Complainant’s SAIC mark because Respondent’s domain names incorporate Complainant’s SAIC mark in its entirety, adding only the abbreviation “inc,” and different generic top-level domains. The Panel finds that such minor additions to Complainant’s registered mark fail to eliminate the confusing similarity pursuant to Policy ¶ 4(a)(i). 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 Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
By alleging that Respondent lacks rights or legitimate interests in the <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names, Complainant has established a prima facie case. Once Complainant makes a prima facie case the Respondent assumes the burden of proving that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to submit a Response may be interpreted by this Panel as evidence that Respondent does not have rights or legitimate interests in the disputed domain names. 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence, including the Respondent’s failure to provide a Response, to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent is using the <saicinc.com>, <saicinc.net>,
<saicinc.biz> and <saicinc.info> domain names to
redirect Internet users to Respondent’s websites, which feature links to
third-party websites offering unrelated goods and services. Presumably, Respondent receives
pay-per-click referral fees from these links.
Respondent’s use of domain names that are confusingly similar to
Complainant’s SAIC mark to redirect Internet users to Respondent’s websites is
neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to policy ¶
4(c)(iii). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use
of a domain name confusingly similar to Complainant’s mark to divert Internet
users to websites unrelated to Complainant's business does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
In addition, there is no evidence in the record suggesting that the Respondent is commonly known by the <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names, either individually or as a business. Complainant asserts that Respondent has no affiliation with Complainant or license to use Complainant’s SAIC mark, and the WHOIS information identifies Respondent as “James Mulhern.” Thus, Respondent is not commonly known by the disputed domain names, and has failed to establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); 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’s <saicinc.com>,
<saicinc.net>, <saicinc.biz> and <saicinc.info>
domain names are confusingly similar to Complainant’s SAIC mark, potentially
confusing Internet users seeking Complainant’s goods and services into
believing that Respondent’s websites are endorsed, sponsored or otherwise
affiliated with Complainant. This
confusion allows Respondent to attract Internet users to its websites featuring
links to unrelated goods and services, from which Respondent presumably earns
pay-per-click referral fees. The Panel
finds that such use constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Bank of Am.
Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(stating that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
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 <saicinc.com>, <saicinc.net>, <saicinc.biz> and <saicinc.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 27, 2006
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