Citrix Systems, Inc. v. Tom Smith
Claim Number: FA0606000730353
Complainant is Citrix Systems, Inc. (“Complainant”), represented by Deborah Peckham, of Kirkpatrick & Lockhart Nicholson Graham LLP, State Street Financial Center, One Lincoln Street, Boston, MA 02111. Respondent is Tom Smith (“Respondent”), 7212 Saybrook Dr., Hudson, OH 44236, US.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citrixsystems.com>, registered with Modern Grid, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2006.
On June 15, 2006, Modern Grid, Inc. confirmed by e-mail to the National Arbitration Forum that the <citrixsystems.com> domain name is registered with Modern Grid, Inc. and that Respondent is the current registrant of the name. Modern Grid, Inc. has verified that Respondent is bound by the Modern Grid, 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 June 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 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@citrixsystems.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <citrixsystems.com> domain name is identical to Complainant’s CITRIX SYSTEMS mark.
2. Respondent does not have any rights or legitimate interests in the <citrixsystems.com> domain name.
3. Respondent registered and used the <citrixsystems.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citrix Systems, Inc., is an industry leader in the development of access infrastructure software. Complainant holds a registration in Australia for its CITRIX SYSTEMS mark (Reg. No. 725929 issued January 9, 1997).
Respondent registered the <citrixsystems.com> domain name on December 2, 2005. Respondent’s disputed domain name resolves to a website that displays an advertisement that the disputed domain name is for sale, as well as links to third-party websites which are unrelated to 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 trademark registration in Australia sufficiently establishes Complainant’s rights in the CITRIX SYSTEMS mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also 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’s <citrixsystems.com> domain name is identical to Complainant’s CITRIX SYSTEMS mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark and simply adds the generic top-level domain name “.com.” In Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000), the panel held that the domain name <robohelp.com> was identical to the complainant’s registered ROBOHELP trademark, and that the addition of “.com” was not a distinguishing difference. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel finds that the addition of the generic top-level domain name does not make the disputed domain name significantly different from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <citrixsystems.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 have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <citrixsystems.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 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.”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use Complainant’s CITRIX SYSTEMS mark, and that Respondent is not associated with Complainant in any way. Furthermore, 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 under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
The evidence on record indicates that Respondent is using the disputed domain name to advertise that the <citrixsystems.com> domain name is for sale, and to display links for unrelated third-party websites from which Respondent presumably receives referral fees. The Panel finds that neither of these uses qualifies as 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). See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith by registering and using the disputed domain name that contains Complainant’s mark in its entirety. The website that resolves from the disputed domain name contains links to unrelated third-party websites. The Panel infers that Respondent receives click-through fees for the operation of the website, and the Panel finds that such use is evidence of bad faith registration and use by the Respondent pursuant to Policy ¶ 4(b)(iv). Respondent’s disputed domain name also creates a likelihood of confusion as to Complainant’s affiliation with the <citrixsystems.com> domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Furthermore, the Panel finds that the offer to sell the <citrixsystems.com> domain name on the corresponding website is evidence of bad faith registration and use. In Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), the panel found that general offers to sell a domain name, even if no certain price was demanded, was evidence of bad faith. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). Accordingly, the Panel finds that Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <citrixsystems.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 27, 2006
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