Artifex Software Inc. v. Page Technology
Marketing, Inc.
Claim
Number: FA0506000489300
Complainant is Artifex Software Inc. (“Complainant”), represented
by Mark E. Miller, of O'Melveny & Myers LLP,
275 Battery Street, 26th Floor, San Francisco, CA 94111. Respondent is Page Technology Marketing, Inc. (“Respondent”), 12750 Carmel
Country Road #211, Sand Diego, CA 92130.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ghostpcl.com>, registered with Go
Daddy Software, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
31, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 3, 2005.
On
June 1, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ghostpcl.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 27, 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@ghostpcl.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
July 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (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 <ghostpcl.com>
domain name is identical to Complainant’s GHOSTPCL mark.
2. Respondent does not have any rights or
legitimate interests in the <ghostpcl.com> domain name.
3. Respondent registered and used the <ghostpcl.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Artifex Software Inc., has been in the
business of marketing and developing printer interpreter technology for over
twelve years. In 1993, Complainant
developed the GHOSTSCRIPT page description language, which is an alternative to
Adobe’s PostScript. Since that time, as
a result of its considerable investment in research and development,
Complainant has developed a family of products related to the Ghostscript
product, including Ghostprinter, GhostPDF and GHOSTPCL. Complainant has distributed its
“Ghost”-related products and services since 1997.
Additionally, Complainant has filed trademark registrations for several
of its marks, including the GHOSTPCL mark (Ser. No. 78/564,128 filed February
9, 2005).
Respondent registered the <ghostpcl.com> domain name on July 1, 2003. Respondent is a producer of PCLTools, which
is a software product that competes directly with Complainant’s products,
including Complainant’s GHOSTPCL software.
The disputed domain name resolves to a website that promotes
Respondent’s products and directs visitors to Respondent’s website at the
<pcltools.com> domain name.
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.
Although
Complainant’s GHOSTPCL mark is not currently registered with a governmental
authority, Complainant may still establish rights in the mark for the purposes
of Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar.
23, 2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
A complainant
may establish rights in an unregistered mark if the complainant can provide evidence
that its use of the mark has been continuous and ongoing and that the mark has
acquired secondary meaning. In the
instant case, Complainant has used its GHOSTPCL mark in commerce since 1997 in
conjunction with the sale and distribution of its software products. Furthermore, Complainant holds a pending
trademark application with the USPTO for the GHOSTPCL mark. See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of the said name [<keppelbank.com>] in
connection with its banking business, it has acquired rights under the common
law.”); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (finding that Complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com> domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark).
Prior panels
have held that the mere addition of a generic top-level domain (“gTLD”) to a
complainant’s mark is irrelevant to a determination under Policy ¶
4(a)(i). The <ghostpcl.com>
domain name includes Complainant’s GHOSTPCL mark in its entirety and adds only
the gTLD “.com.” Thus, the Panel
determines that the domain name is identical to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants"); see also Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Under the Policy, the initial burden for proving that Respondent lacks
rights and legitimate interests in the disputed domain name falls on
Complainant. However, if Complainant
can establish a prima facie case as to
Policy ¶ 4(a)(ii), the burden of proof shifts to Respondent to make a showing
of rights or legitimate interests in the disputed domain name, which it may do
in accordance with Policy ¶ 4(c). See G.D.
Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see
also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding 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
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name). In this
case, the Panel determines that Complainant has met its burden. Thus, since Respondent has not submitted a
response to Complainant’s contentions, the Panel finds that Respondent has not
established rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise).
Numerous panels
have held under the Policy that a respondent’s use of a domain name that
contains another’s mark to divert Internet users to a website that offers
products that compete with the mark holder’s business is not sufficient to
establish rights or legitimate interets under Policy ¶¶ 4(c)(i) and (iii). Therefore, the Panel finds that Respondent’s
use of a domain name that is identical to Complainant’s GHOSTPCL mark to lead
Internet users to a website that offers Respondent’s competing products is not
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection
with a bona fide offering of goods and services because Respondent is using the
domain name to divert Internet users to <visual.com>, where services that
compete with Complainant are advertised.”); 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).
There is no evidence in the
record indicating that Respondent is commonly known by the <ghostpcl.com> domain name, and Complainant contends
that Respondent has not acquired a license or permission from Complainant to
use its GHOSTPCL mark in any manner. In
fact, the WHOIS information identifies Respondent as “Page Technology
Marketing, Inc.” and in no way mentions any other relationship between
Respondent’s identity and the <ghostpcl.com> domain name. Therefore, the Panel finds that Respondent
has failed to establish rights or legitimate interests under Policy ¶
4(c)(ii). See Am. Online,
Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum
May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp”); 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 Complainant has satisfied Policy ¶ 4(a)(ii).
It has been
widely held under the Policy that when a respondent uses a domain name that
infringes on the mark of another to mislead Internet users to a website that
offers products or services that compete with the complainant, there is
evidence of bad faith registration and use.
See 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)); see also EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where the respondent’s sites pass users through to the respondent’s
competing business); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the <eebay.com> domain name in bad faith where the
respondent used the domain name to promote competing auction sites). In the instant case, Respondent is a
producer of PCLTools, which is a software product that competes directly
with Complainant’s products, including
its GHOSTPCL software, and Respondent is using the <ghostpcl.com>
domain name to link to a website that promotes Respondent’s products. The Panel finds that Respondent’s use of
Complainant’s mark in a domain name to divert Complainant’s potential customers
to Respondent’s competing website is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii).
Furthermore,
Respondent is using the <ghostpcl.com> domain name for its own
commercial gain by confusing Internet users as to Complainant’s affiliation
with the resulting website. Respondent
may attract confused consumers to its website, because Internet users searching
for Complainant’s products and services under its GHOSTPCL mark may wrongly
believe that Respondent’s website has some affiliation with Complainant due to
the similarity of the products advertised at Respondent’s website. The Panel finds that Respondent’s use of a
domain name that contains Complainant’s mark to lure Complainant’s potential
customers to Respondent’s competing website is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and giving
the impression of being affiliated with or sponsored by Complainant, this
circumstance qualifies as bad faith registration and use of the domain name
pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
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 <ghostpcl.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 13, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum