Electric Sheep Fencing LLC v. Technical Support / Product Response
Claim Number: FA1412001594858
Complainant is Electric Sheep Fencing LLC (“Complainant”), represented by Dwayne K. Goetzel of MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C., Texas, USA. Respondent is Technical Support / Product Response (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pfsensesupport.com>, registered with Tucows Domains 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2014; the National Arbitration Forum received payment on December 11, 2014.
On December 12, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <pfsensesupport.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pfsensesupport.com. Also on December 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 2, 2015.
Complainant filed a timely Additional Submission on January 7, 2015, which was received on January 7, 2015 and found to be compliant that same day.
On January 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant and its predecessor in interest have widely used the PFSENSE mark since at least as early as 2005 in connection with the marketing of Complainant’s goods and services, which include computer hardware and software, and technical support services, namely troubleshooting of computer software problems, maintenance of computer software and computer software development.
The mark pfSense was registered with the United States Patent and Trademark Office ("USPTO") as Reg. No. 3,517,276 on February 10, 2009. The mark PFSENSE was registered with the "USPTO as Reg. No. 4,414,546 on October 18, 2013 (application date March 4, 2013).
The <pfsensesupport.com> domain name (the “Domain name) was originally registered on March 23, 2013.
The Domain Name is confusingly similar to Complainant’s PFSENSE mark (the “Mark”). It incorporates the Mark in its entirety.
Respondent has no right or legitimate interest in the Domain Name. Complainant has never authorized Respondent to use its Mark. Respondent is using the Domain Name to offer competing goods and services for sale, which is not a bona fide offering of goods or services. Further, Respondent’s name as shown on the website resolving from the Domain Name is “Open Source 911” and its WHOIS information does not show its name to be either “PfSense” or “Pfsense Support.” It is not commonly known as the Domain Name.
Respondent is using the Domain Name for commercial purposes; not in connection with any noncommercial or other fair use.
Respondent registered and is using the Domain Name in bad faith. Respondent is using the Domain Name to promote its own competitive technical support services, which constitutes an unauthorized trading upon the goodwill in and to Complainant’s Mark.
Complainant’s mark was well known and was registered with the USPTO long before the Domain Name was originally registered. Respondent had actual knowledge of Complainant and its Mark at the time of registration.
Respondent’s use of the Domain Name has diverted consumers from Complainant’s online location to Respondent’s own web site, which has caused confusion among relevant consumers, harmed the goodwill represented by Complainant’s mark, and prevented Complainant from using its Mark in association with the Domain Name.
B. Respondent
Respondent is in the business of providing computer support in the open source community, in which Complainant operates. It has a number of websites that it uses to drive traffic to its website, including the following: OpenSource911.com, SnortSupport.com, OpenVPNSupport.com,AsteriskAnent.com, FreenasSupport.com, OwnCloudSupport.com, FreeSwitchSupport.com, and BaculaSupport.com.
Respondent has provided support for pfSense packages for many years, longer than Complainant has.
In 2014, LINBIT Information Technologies GmbH brought a case against Respondent asserting claims virtually identical to those asserted by Complainant here. The WIPO panel in that case (No. D2014-1528, copy of Decision annexed to Response) ruled in favor of Respondent.
C. Complainant’s Additional Submission
Respondent’s claims of offering support for pfSense open source packages are unsubstantiated by any documentary or other evidence. The web sites listed or referred to by Respondent are for “glstech” and “gilinux support” respectively, not “Technical Support” or “Product response,” which are the names used by Respondent. More importantly neither of those sites makes any mention of pfSense products. Neither of these websites furnishes any evidence whatever that Respondent is making a bona fide offering of support services for pfSense products.
Respondent’s website resolving from the Domain Name (Annex 5 to Complaint and Annex 10 to Complainant’s Additional Submission) does appear to offer support for pfSense products, albeit by a firm called “Open Source 911.” Nevertheless, if the Internet user follows the prompts and links on Respondent’s website, seeking to obtain support for pfSense products, he is led through various pages eventually to a Terms and Conditions document that articulates the business arrangement between the user and Respondent, who is identified in that document as “Product Response.” That document states in relevant part that Respondent is in the business of providing VPS hosting, and has a Data Center in Los Angeles to provide a variety of hardware and software support for its clients. There is no mention in this document of pfSense, or its products, or support for them.
The decision in the LINBIT case referred to by Respondent cited and relied upon an earlier decision, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case no. D2001-0903. In that decision the Panel held that the minimum requirements that must be met in order for a respondent using the trademark of another in its domain name to establish a bona fide use of that domain name include the following: (i) the respondent must actually be offering the goods or services at issue; and (ii), “the respondent must use the domain name to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods.” The evidence described above fails to demonstrate that Respondent has met either of these two conditions: Despite its unsupported allegations to the contrary, it does not appear to be offering support services for pfSense products. More importantly, it is offering different products furnished by itself and other suppliers, and is attempting to “bait and switch” consumers who are lured by the presence of Complainant’s Mark in the Domain Name to Respondent’s website. The evidence presented does not support Respondent’s claim that it is using the Domain Name in connection with a bona fide offering of goods and services.
This additional information reinforces the evidence presented earlier of Respondent’s bad faith use of the Domain Name. It is clearly using the name to attract for its commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of its web site.
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."
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 makes the findings and determinations set forth below with respect to the Domain Name.
Identical and/or Confusingly Similar
Complainant has used the PFSENSE Mark since 2005 in providing computer software solutions. The mark PFSENSE was registered with the USPTO as Reg. No. 3,517,276 on February 10, 2009, and the mark PFSENSE was registered with the USPTO as Reg. No. 4,414,546 on October 18, 2013 (application date March 4, 2013). This is sufficient evidence of Complainant’s rights in the Mark here. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <pfsensesupport.com> domain name is confusingly similar to the PFSENSE mark. The distinctive element of the Domain Name is Complainant’s PFSENSE Mark. The term “support” is merely descriptive and is not sufficient to distinguish the Domain Name from the Mark. See, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does. 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 interest in the 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 asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by the following: (1) Respondent has not been licensed or permitted to use the PFSENSE Mark or any domain names incorporating that mark, (2) Respondent is not commonly known by the name “PFSENSE,” (3) Respondent is not making a noncommercial or fair use of the Domain Name within the meaning of Policy ¶ 4(c)(iii), and (4) Respondent uses the Domain Name to misdirect consumers searching for Complainant to its own website, which is not a bona fide offering of goods and services. Based upon these allegations and the supporting facts offered by Complainant, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent disputes none of the first three allegations listed above. Its claim to rights and legitimate interests is based solely upon its use of the Domain Name in connection with a bona fide offering of goods and services, namely the support of computer software packages originated by Complainant. Respondent is clearly not an authorized dealer or sales or service representative of Complainant, but prior UDRP decsions and other respected sources, e.g., the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (‘WIPO Overview 2.0”) have reasoned that if certain conditions are met even an unauthorized reseller or distributor of trademarked goods and services can make a bona fide use of a domain name incorporating the trademark, and thus acquire rights and legitimate interests in the domain name. Those conditions, as articulated by the Panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, are as follows:
(1) the respondent must actually be offering the goods or services at issue;
(2) the respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods;
(3) the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact it is only one of many sales agents; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Oki Data addressed the case of an authorized sales or service agent, but as indicated in the WIPO Overview 2.0 other panels have extended this concept to cases involving unauthorized representatives. National Association for Auto Stock Car Racing, Inc., v. Racing Connection/The Racin Connection, Inc., WIPO Case No. D2007-1524 (domain name <nascartours.com>, complaint denied), LINBIT Information Technologies GmbH v. Technical Support, WIPO Case No. D2014-1528 (domain name <drbdsupport.com>, complaint denied). The key factor in both of these cases was whether the respondent’s business genuinely revolved around the trademark owner’s goods or services.
Since Respondent alleges that it does in fact use the Domain Name to support pfSense products the Panel must determine whether the Oki Data conditions have been met in this case.
The first and second conditions listed above are closely related, and the Panel elects to address the evidence relevant to both of them collectively. Respondent claims that it supports pfSense products and has been doing so since at least 2007. The home page of its website (Annex 5 to amended Complaint and Annex 10 to Complainant’s Amended Complaint) purports to offer such support services (albeit under the name “OPENSOURCE911”). Nevertheless, Complainant’s Additional Submission furnished evidence of what happens when an Internet user follows up on the website’s offer of support for pfSense products. Clicking on one of the support links on the home page takes the user to a support page at <http://pfsensesupport.com/index-4.html> (Annex 12 to to Complainant’s Additonal Submission), which is entitled “Help Desk” and invites the user either to sign on or, alternatively, to create an account for free. It contains no reference to any type of products. If the user clicks to create an account he is directed to a new page at <https://billing.productresponse.com/index.php?/signup/> (Annex 13 to Complainant’s Additonal Submission), soliciting information about the new applicant. Again, there is no reference to any type of products. At the top of this page there are links to “Portal Home,” “Order,” “Client Area,” and “Open Trouble Ticket.” Clicking the “Client Area” link takes the user to a page where he is again invited to sign in. Clicking the “Order” link takes the user to a page at <https://billing.productresponse.com/index/php?/cart/> (Annex 14 to Complainant’s Additonal Submission) where “PBX in a Flash” products are offered for sale, with “Order Now” links by each product; there is no reference to or mention of pfSense products. Clicking the link “Portal Home” on the Annex 13 page leads to the same Annex 14 page. Clicking the “Order Now” link by any product on either of these pages takes the user to a page at <https://billing .productresponse.com/index.php?page=terms--conditions> (Annex 15 to Com-plainant’s Additonal Submission), which is entitled “VPS & DEDICATED SERVER AGREEMENT” and sets forth terms of the business arrangement between Respondent (acting as Product Response) and its customer. According to Section 1 of the Agreement, Product Response “is in the business of providing support and VPS hosting, and has its facility at [street address], Los Angeles, CA (herein “Data Center”) to provide a variety of hardware and software support for clients.” The Agreement provides among other things for the client “to connect certain equipment or computer devices (“VPS,” “Dedicated Server,” or “Equipment”) leased by Client to the Data Center for the purposes of obtaining internet access and services from Product Response . . .“ and for Product Response to “provide basic services (“VPS,” “Dedicated Server,” “Internet Services”) to Client, . . . .” The Agreement contains no reference to pfSense or any of its products.
All references to pfSense disppear completely after the first two pages of Respondent’s website (Annexes 10 & 11 to Complainant’s Amemded Complaint), and all of the links and materials on the follow-on pages refer only to opportunity to buy PBX in a Flash products (not produced or sponsored by Complainant) and goods and services furnished by Product Response, as set forth in the Agreement.
Thus, while Respondent says that it supports pfSense products, and while the home and second pages of its website purport to offer such services, the evidence before the Panel cannot support a finding that Respondent actually is offering support services for pfSense products, let alone that it is offering only such services from its <pfsensesupport.com> web site. As stated above, once a complainant establishes a prima facie case of no rights or legitimate interests, it is incumbent upon the respondent to demonstrate that it does. The evidence presented by Complainant’s Additional Submission, while not absolutely conclusive, does raise serious doubt that Respondent is using the Domain Name in connection with a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i) and in accordance with the requirements articulated in Oki Data. This evidence demands rebuttal or additional information from Respondent, which Respondent has declined to furnish. On the evidence before the Panel, it must find and conclude that Respondent has failed to demonstrate that it is using the Domain Name in connection with a bona fide offering of goods and services.[1]
Based upon the foregoing, the Panel finds and determines that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Registration and Use in Bad Faith
As of March 23, 2013, when the Domain Name was registered, Complainant had been using its PFSENSE Mark for years. Its earliest USPTO registration of the Mark PFSENSE, Reg. No. 3,571,276, was as of February 10, 2009. The term “PFSENSE” is unique. It is not a term that would occur to a person in the ordinary course. It has no inherent meaning in and of itself; it has meaning only as it is associated with Complainant, an entity active in the open source computer software industry. Respondent claims that it acquired the Domain Name in order to of provide support for pfSense products. It follows that Respondent had actual knowledge of Complainant and its rights in the Mark when it registered the Domain Name. This is persuasive evidence of bad faith registration. Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); Minicards Vennootschap Onder Firma Amsterdam .v Moscow studios, FA 10103 (Nat. Arb. Forum September 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).
Currently, Respondent is using the Domain Name to attract Internet users to its website, which purports to offer support services for pfSense products but in fact does not. Instead, it offers products and services, such as PBX in a Flash and goods and services furnished directly by Respondent, that are not related to Complainant or its products and which in fact compete with them (Annexes 11 – 15 to Complainant’s Amended Complaint). Respondent is thus using the Domain Name to attract Internet users to its website for its own commercial gain by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of its website within the meaning of Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)”).
Based upon the foregoing, the Panel finds and determines that Respondent registered and is using the Domain Name in bad faith.
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pfsensesupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: January 19, 2015
[1] Because of the Panel’s findings relative to the first two conditions articulated in Oki Data, it declines to analyze the evidence bearing on the remaining two.
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