TechSmith Corporation v. Suni Artola
Claim Number: FA1902001832158
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is Suni Artola (“Respondent”), Nicaragua.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techsmithtotal.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2019; the Forum received payment on February 28, 2019.
On March 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <techsmithtotal.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 March 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2019 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@techsmithtotal.com. Also on March 1, 2019, 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 March 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 registered the TECHSMITH mark with the United States Patent and Trademark Office (“USPTO”) as early as February 2, 1993 in relation to “computer consultation, computer design and programming for other.” It has also registered the mark with the trademark offices of Brazil, Australia, China, Japan, Korea, and New Zealand. Respondent’s <techsmithtotal.com>, registered on November 7, 2018, is identical and/or confusingly similar to TECHSMITH mark because Respondent only added the generic term “total” and the “.com” generic top-level domain name (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interest in the <techsmithtotal.com> domain name because Respondent is not permitted or otherwise authorized to use Complainant’s TECHSMITH mark, nor is Respondent commonly known by the disputed domain name. Furthermore, Respondent is intentionally using the domain name for commercial gain and/or to disrupt the business of Complainant by misleadingly diverting consumers to the <techsmithtotal.com> website that displays technology and computer consultation related content. Additionally, Respondent has failed to respond to Complainant’s cease and desist letter and follow-up emails.
Respondent registered and uses the <techsmithtotal.com> domain name in bad faith. Respondent had actual notice of Complainant’s mark prior to registering the domain name given Respondent’s prominent display of the TECHSMITH mark on the website associated with the disputed domain name. Respondent is using Complainant’s mark to attract the public to the <techsmithtotal.com> domain name, where it offers competing technology and computer consultation related content without permission of Complainant. Additionally, Respondent failed to respond to Complainant’s cease and desist letter and follow-up emails.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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.”).
Complainant claims to have rights in the TECHSMITH mark through its registration with the USPTO and the trademark offices of a number of other countries (although it has only submitted evidence of its USPTO registrations). Registration of a mark with a governmental authority is sufficient to establish rights in the mark. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority . . . is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Here, Complainant has provided this Panel with copies of three of its registrations of the TECHSMITH mark with the USPTO. Thus, this Panel finds that Complainant has rights in the TECHSMITH mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <techsmithtotal.com> domain name is identical and/or confusingly similar to Complainant’s TECHSMITH mark because Respondent added the generic term “total” and the gTLD “.com” to Complainant’s mark. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s TECHSMITH mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts that Respondent has no rights or legitimate interests in the <techsmithtotal.com> domain name as Respondent is not known by the disputed domain name and the Complainant did not authorize Respondent to use its TECHSMITH mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Suni Artola” and, in the absence of a response or other submission by the Respondent, there is no evidence to suggest that Respondent is known otherwise or is authorized to use the TECHSMITH mark. Therefore, the Panel accepts Complainant’s unrebutted assertions and finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name <techsmithtotal.com> because Respondent is intentionally using the domain name for commercial gain and/or to disrupt the business of Complainant by misleadingly diverting consumers to the domain name associated with a technology and computer consultation related content. Using a domain name to compete with a complainant is generally not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Complainant provides a screenshot of the disputed domain name’s resolving webpage, which purports to offer information relating to technology under the name TECH SMITH. Further, the term “TechSmith” with no space and capitalized letters “T” and “S”, as the term appears in one of Complainant’s submitted trademark registrations, appears many times on Respondent’s page. In light of Complainant’s unrebutted assertions, the Panel finds that Respondent’s webpage offering technology and computer consultation related content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TECHSMITH mark at the time of registering the <techsmithtotal.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Although Complainant submits no evidence concerning the reputation of its mark, it contends that Respondent’s knowledge thereof can be inferred given Respondent’s prominent display of the TECHSMITH mark on the competing website associated with the domain name and the appearance of the term as “TechSmith” in the same presentation as used by Complainant (i.e., no spaces and capitalized letters “T” and “S”). In the absence of any response or other submission by the Respondent, the Panel accepts Complainant’s unrebutted contention and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Complainant next claims that Respondent is using Complainant’s mark to attract the public to the <techsmithtotal.com> domain name, where it offers competing technology and computer consultation related content without permission of the Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel notes that Complainant has submitted into evidence a screenshot of the disputed domain name’s resolving webpage purporting to offer information relating to technology under the name TECH SMITH and TechSmith. The Respondent has not participated in this case or responded to the Complainant’s demand letter or follow-up emails. Accordingly, the Panel accepts Complainant’s unrebutted assertion that Respondent attempted to commercially benefit from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techsmithtotal.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 26, 2019
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