Riverbed Technology, Inc. v. CHRISTOPHER BOOTH
Claim Number: FA1706001735684
Complainant is Riverbed Technology, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is CHRISTOPHER BOOTH (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riverbedtechnologyinc.com>, registered with eNom, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2017; the Forum received payment on June 15, 2017.
On June 14, 2017, eNom, LLC confirmed by e-mail to the Forum that the <riverbedtechnologyinc.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 June 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2017 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@riverbedtechnologyinc.com. Also on June 19, 2017, 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 July 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Riverbed Technology, Inc., is a software developer based in San Francisco, California, USA. In connection with this business, Complainant uses the RIVERBED mark to promote its goods and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,931,934, registered Mar. 8, 2005). Respondent’s domain name, <riverbedtechnologyinc.com>, is confusingly similar as it wholly appropriates Complainant’s mark and appends the descriptive terms “technology” and “inc” and the generic top-level-domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to make use of its RIVERBED marks. Further, Respondent failed to use <riverbedtechnologyinc.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses <riverbedtechnologyinc.com> in bad faith. Respondent registered the disputed domain name with the intent to sell it. Respondent had, at the least, constructive notice of Complainant’s rights in the RIVERBED mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <riverbedtechnologyinc.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."
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.
Identical or Confusingly Similar
Complainant asserts rights in the RIVERBED mark based upon registration with the USPTO (Reg. No. 2,931,934, registered Mar. 8, 2005). Registration of a mark with a governmental trademark authority—such as the USPTO—establishes rights in said mark per Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (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 Panel finds Complainant has rights in the RIVERBED mark.
Next, Complainant argues Respondent’s domain name is confusingly similar to the RIVERBED mark as it wholly appropriates Complainant’s mark and appends the descriptive terms “technology” and “inc” and the generic top-level-domain gTLD “.com.” The addition of terms descriptive of a complainant’s business and a gTLD does not remove a domain name from the realm of confusing similarity pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Here, “technology” and “inc” describe the nature of Complainant’s software development business. The Panel finds <riverbedtechnologyinc.com> to be confusingly similar to Complainant’s mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and 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 (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 (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 Respondent is not commonly known by <riverbedtechnologyinc.com> and that Complainant has not authorized Respondent to make use of the RIVERBED mark. Where there is no evidence in the record to the contrary, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name; similarly, where there is no evidence in the record of a complainant’s authorization of a respondent to use a mark, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Use of a WHOIS privacy service further implies that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information names “WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC” as the registrant prior to commencement of the proceedings, and “CHRISTOPHER BOOTH” afterwards. The Panel finds Respondent is not commonly known by the disputed domain name.
Next, Complainant argues Respondent failed to use <riverbedtechnologyinc.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use, and fails to make an active use of the disputed domain name. Failure to make an active use of a disputed domain name evinces a finding that a respondent lacks rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Respondent registered <riverbedtechnologyinc.com> April 7, 2017 and has not made a bona fide use of the domain name. The Panel finds Respondent lacks rights and legitimate interests in <riverbedtechnologyinc.com>.
Complainant has proved this element.
Complainant argues Respondent registered the disputed domain name with the intent to sell it. Inactive holding of a domain name can substantiate a finding that a respondent registered the domain name for the purpose of selling it per Policy ¶ 4(b)(i). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale). Here, Respondent registered a domain name wholly appropriating Complainant’s marks and trade names, and failed to make an active use of it for over 3 months. The Panel agrees with Complainant that Respondent’s inactivity infers intent to sell the domain name and finds Respondent registered and used <riverbedtechnologyinc.com> in bad faith.
Complainant asserts Respondent had, at the least, constructive notice of Complainant’s rights in the RIVERBED mark. The non-exclusive nature of Policy ¶ 4(a)(iii) allows panels to look beyond Policy ¶ 4(b) arguments to the totality of the circumstances in analyzing for bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Constructive notice of a complainant’s rights in a mark is insufficient for a finding of bad faith pursuant to Policy ¶ 4(a)(iii); however, a respondent’s actual knowledge of a complainant’s rights in a mark can be inferred from the domain name and the use made of it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent wholly appropriates Complainant’s RIVERBED trademark, as well as Complainant’s Riverbed Technology, Inc. business name. The Panel agrees that Respondent’s actions demonstrate actual knowledge of Complainant’s rights in the RIVERBED mark and finds Respondent acted in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <riverbedtechnologyinc.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 17, 2017
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