NetApp, Inc. v. Shobhit
Claim Number: FA1511001647506
Complainant is NetApp, Inc. (“Complainant”), represented by Rochelle D. Alpert of Morgan, Lewis & Bockius LLP, California, USA. Respondent is Shobhit (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netappexperts.org> ('the Domain Name'), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2015; the Forum received payment on November 17, 2015.
On November 18, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <netappexperts.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@netappexperts.org. Also on November 30, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant's contentions can be summarised as follows:
Complainant is a publicly traded Fortune 500 company offering computer hardware and software products for data storage and management and related services. It has been in existence and using its NETAPP mark for over two decades and owns registered rights to this well-known mark worldwide for its services, including India where the Respondent is based.
For more than 20 years the Complainant has promoted and marketed its products and services on its official web site netapp.com, a domain it has owned since 1992.
The Domain Name is confusingly similar to the Complainants NETAPP mark and name incorporating it in its entirety. The addition of a generic word such as 'experts' fails to distinguish the Domain Name from the Complainants mark. 'Expert' is relevant to the Complainant which provides technical support and education services.
The inclusion of a top level domain such as .org does not have any legal significance and does not distinguish the Domain Name from the Complainants’ mark.
Respondent has not used the Domain Name in relation to a bona fide offering of goods and services, is not commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of the Domain Name. As such it does not have any rights or legitimate interests in the Domain Name.
The Complainant has never authorised the Respondent to use its NETAPP mark. Respondent does not appear to be commonly known by the Domain Name. All of the contact information on the website seems invalid and the WHOIS information is incomplete and insufficient. The Domain Name was registered in 2015 and there is no evidence of an entity known by the Domain Name prior to this and no company in India registered in this name.
The use is not non-commercial as Respondent is receiving monetary advantage or personal information from users by using the Domain Name and its web site represents that it is a commercial web site operating in the computer software and development field offering goods and services which are highly related to the goods and services offered by the Complainant and under a similar name to the Complainant. As such the Respondent must have known about the Complainant.
The Domain Name is being registered and used in bad faith.
The Respondent is using the Domain Name to capitalise on the goodwill in the Complainant’s NETAPP mark to attract users familiar with the Complainant’s services in order to generate revenue or valuable consumer contact information. As such the Respondent has intentionally attempted to attract for its own commercial gain Internet users familiar with the Complainant’s mark to the Respondent's web site where similar services are offered to create a likelihood of confusion with the Complainant and its mark as to the origin of the Respondent's web site when there is no connection, in fact, with the complainant.
The incomplete contact information is strong evidence of bad faith. Respondent's false claim that 'Net App Experts' is 'One of the largest firm (sic) in India' also shows bad faith given there is no evidence or an entity by this name in India. Since the Domain Name has only just been registered it seems the Respondent has knowledge of the Complainant and its services prior to registration of the Domain Name demonstrating knowledge and bad faith and is seeking, in fact, to syphon off the Complainant’s customers and offer competing similar services for profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant offers computer hardware and software products for data storage and management and related services. It has been in existence and using its NETAPP mark for over two decades and owns registered rights to this mark for its services, including India where the Respondent is based.
The Domain Name was registered in 2015 and has been used to offer services competing with those of the Complainant which are unconnected with the 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."
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.
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.”).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainants NETAPP registered trade mark and the generic word experts. see Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat.Arb.Forum Apr 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.")
The addition of the word experts does not serve to distinguish the Domain Name from the Complainants mark. See Vanguard Group Inc. v Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (finding that the addition of the word advisors and the gTLD .com did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy 4 (a)(i)).
As such, the Panelist finds that the Domain Name is confusingly similar to the Complainants registered trade mark NETAPP for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy.
The Panelist has had an opportunity to review the Respondent's web site and is of the opinion that it gives the impression that it is an official site of the Complainant when it is not authorised. It was not clear to the panellist upon a quick review of the site that it was not the site of the Complainant and unauthorised. The use of the Domain Name only registered in 2015 in relation to a site using the NETAPP logo and a statement that the Respondent is one of the biggest companies in India gives the impression that the user has found the Complainant. As such the web site must be considered to be misleading and the Respondent passing itself off as connected with the Complainant when it is not. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.)
The Respondent has not responded to the Complaint and not provided any reason why its registration or use of the Domain Name is legitimate or based on any rights of the Respondent.
As such, the Panelist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web site is confusing and misleading the Panelist believes that the Respondent is attempting to pass itself off as the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion, by using the Complainant's marks and logo, as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy. See Asbury Auto, Group, Inc v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv)).
As such the Panelist finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netappexperts.org> domain name be TRANSFERRED from Respondent to Complainant
<<Dawn Osborne >>, Panelist
Dated: <<January 6, 2016 >>
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