Wolfram Group LLC v. Andrew Davis et al.
Claim Number: FA1404001554143
Complainant: Wolfram Group LLC of Champaign, Illinois, United States of America.
Complainant Representative: Wolfram Group LLC of Champaign, Illinois, United States of America.
Respondent: Andrew Davis of Port of Spain, International, Trinidad And Tobago.
Every CEO of Port of Spain, International, Trinidad And Tobago.
REGISTRIES and REGISTRARS
Registries: CEO Registry
Registrars: 101domain, 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 Examiner in this proceeding.
Jonathan Agmon, as Examiner.
Complainant submitted: April 15, 2014
Commencement: April 22, 2014
Response Date: April 28, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
A. Complainant
The Complainant contends as following:
Complainant is the owner of the WOLFRAM mark, used in connection with software, data analysis, graphics, publishing, mathematic and scientific modeling, educational services, lecturing and more. Complainant registered the WOLFRAM mark (e.g., Reg. No. 3,740,375 registered January 19, 2010) with the United States Patent and Trademark Office (“USPTO”).
WOLFRAM.CEO is identical and confusingly similar to the word "Wolfram", for which Wolfram Group LLC holds multiple valid national registrations in current use.
Registrant has no legitimate right or interest to WOLFRAM.CEO.
WOLFRAM.CEO was registered and is being used in bad faith. Registrant has registered WOLFRAM.CEO in order to prevent Wolfram Group LLC from reflecting the mark in a corresponding domain name, and has engaged in a pattern of such conduct.
According to respondent's web site andrewdavis.ceo, he owns "Hundreds of the Best .CEO Domains available on the web." Further, Respondents' "collection comprises of the Top Premium .CEO Domains", that is an indication of the Respondent's bad faith.
By using WOLFRAM.CEO Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Registrant’s web site.
B. Respondent
The Respondent contends as follows:
Wolfram is a common name for a person, mainly in Germany and the Respondents knows some person name "Wolfram" who are CEOs.
Wolfram.CEO is also a part of a larger project (Every.CEO), which the Respondent plans to turn into either a Social Network or some platform for CEOs, Executives, Business owners and Leaders. As part of this project the Respondent also owns domains such as: Wolfgang.CEO, Andrew.CEO, James.CEO, John.CEO, Michael.CEO, Smith.CEO, Jones.CEO, Brown.CEO,
The Respondent owns over 100 other .CEO Domains, and around 170 Domains in total, including the domains of its Clients.
The Respondent never reached out to The Complainant, nor have placed any information about the Complainant on its website, or done anything that suggests the Respondent registered the domain name in bad faith.
The majority of the Respondent's .CEO domains do NOT have any known Trademark associated to them.
Owning .CEO domains of the most common First and Last names in the world is not indicative of bad faith; it is simply the best way for the Respondent to cover as many CEOs as possible, for his lists.
The Respondent's website is not Styled or Colored in a similar way to any of the websites owned by the Complainant.
The Respondent add a Disclaimers on his website stating the website is not affiliated or connected with the Complainant.
The Panel finds as follows:
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended:
1.2.6.1: the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
1.2.6.2: Respondent has no rights or legitimate interests in respect of the domain name; and
1.2.6.3: the domain name has been registered and is being used in bad faith.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant demonstrates that it registered the WOLFRAM mark (e.g.., Reg. No. 3,740,375 registered January 19, 2010) with the USPTO.
Complainant next asserts that the <wolfram.ceo> domain name is identical to Complainant’s WOLFRAM mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the additional cc.TLD ".ceo". Therefore, the Panel finds that the <wolfram.ceo> domain name is identical to the WOLFRAM mark pursuant to URS Procedure 1.2.6.1.
Under the Policy ¶ 4(a)(ii) it is up to the Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and only then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in respect of the <wolfram.ceo> domain name. Respondent's name is Davis and he lacks of any affiliation with a company whose name includes "WOLFRAM".
To respond this allegation the Respondent argues that he does have a legitimate interest in the domain name wolfram.ceo, since his future website will contain a large directory of CEOs, Business Owners and leaders named Wolfram.
The Panel was not persuaded by the arguments made by the Respondent and finds that the Respondent failed to show that it has rights or legitimate interest in the disputed domain name.
The Panel finds that the Respondent's arguments does not demonstrate any kind of legitimate interest to use a trademark that belongs to a third party and which the Respondent was aware of, since the Respondents clearly knows the Complainant and its trademarks since the Respondent stated in its reply that he had removed all possibilities of its websites creating confusion with a Trademarked name, before this (Wolfram) case was submitted and after the decision in the URS case URS Case #1550814 (“ArcelorMittal vs Andrew Davis”).
Therefore, the Panel finds that the Complaint meets URS requirement of 1.2.6.2.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
Complainant argues that Respondent registered and is using the <wolfram.ceo> domain name in bad faith. Complainant contends that the fact that the Respondents owns a "collection" of top premium .CEO domains is an indication to the Respondent bad faith. The Panel agrees with the Complainant's arguments. The Panel considers that holding such a large portfolio of domain names is an indicia of bad faith, particularly considering that, as seen in this case, an identical trademark owned by a third party is involved (See URS Case #1550814 (“ArcelorMittal vs Andrew Davis”).
The Complainant asserts that its brand is known internationally. Complainant notes that the mark has been used over 25 years, and the tope results of multiple search engine for "Wolfram.ceo" leads directly to the Complainant. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy and the URS requirement of 1.2.6.3..
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<wolfram.ceo>
Jonathan Agmon, Examiner
Dated: April 30, 2014
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