Hyland Software, Inc. v. Hyland Software Inc
Claim Number: FA1804001783610
Complainant is Hyland Software, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Hyland Software Inc (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hylandinc.com> (the “Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2018; the Forum received payment on April 25, 2018.
On April 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hylandinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2018 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@hylandinc.com. Also on April 26, 2018, 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 May 21, 2018 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 the owner of the well known trade marks HYLAND and HYLAND SOFTWARE registered, inter alia, in the USA for computer software and used since 1990. It has owned Hyland.com since 1995.
The Domain Name is confusingly similar to Complainant’s HYLAND mark. Addition of the business descriptor ‘inc’ does nothing to reduce the confusing similarity and indeed engenders further confusion because Complainant’s full business name contains ‘inc’. Nor does the use of a gTLD create a meaningful distinction from Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and has not connected a site to the Domain Name. However the Domain Name has been registered falsely in the name of one of Complainant’s employees in a suspected phishing purpose. This is not a bona fide offering of services or a non commercial legitimate fair use.
This is registration and use in bad faith. The false use of the name of one of Complainant’s employees on the WhoIS proves Respondent is aware of Complainant and its business. Respondent’s fraudulent posing as one of the executives of Complainant is direct evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade marks HYLAND and HYLAND SOFTWARE registered, inter alia, in the USA for computer software and used since 1990. It has owned <Hyland.com> since 1995.
The Domain Name has not been used for a web site, but has been registered falsely in the name of one of Complainant’s executives.
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(f), 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 (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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant’s HYLAND trade mark (registered in the USA for, inter alia, computer software with first use recorded as 1990), the generic corporate designation ‘inc’ and the gTLD .com. Adding such a generic indication and a gTLD does not distinguish the Domain Name from Complainant’s HYLAND mark which is the distinctive component of the Domain Name. See Microsoft Corporation v Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and gTLD) See also Trip Network Inc. v Alviera, FA 914943 (Forum Mar 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name, the information on the WhoIS being false. Such false information and the use of the name of an executive of Complainant is passing off and is evidence of a lack of a bona fide offering of goods and services or a legitimate non commercial fair use.
As such the Panelist finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of the name of a complainant’s executive on the WhoIS is disruptive and evinces bad faith registration and use.
This mimicking by Respondent of Complainant shows that Respondent was aware of Complainant and its business and rights and constitutes passing off. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy ¶ 4(b)(iv) in a manner likely to disrupt the business of Complainant under Policy ¶ 4(b)(iii).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and 4 (b)(iv). There is no need to consider any additional grounds of 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 <hylandinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 22, 2018
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