Nutanix, Inc v. New New
Claim Number: FA1910001867665
Complainant is Nutanix, Inc (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson P.C., Massachusetts, USA. Respondent is New New (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutanixlimited.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2019; the Forum received payment on October 21, 2019.
On October 21, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nutanixlimited.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 October 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@nutanixlimited.com. Also, on October 24, 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 November 15, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <nutanixlimited.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the NUTANIX mark acquired by its ownership of its portfolio of registered trademarks described below and use of the mark in its computer and software business. Complainant submits that its trademark registrations for the NUTANIX mark are prima facie evidence, creating a rebuttable presumption, that the mark is distinctive, and shifts the burden to Respondent to refute this assumption.
Complainant submits that the disputed domain name is confusingly similar to the NUTANIX mark, in which Complainant has statutory and common-law rights. The disputed domain name incorporates the entirety of Complainant’s mark and adds only the descriptive term “limited” followed by the gTLD <.com> extension.
Complainant submits that previous panel decisions make clear that the mere addition of purely descriptive (if not generic) terms – such as “limited” – and a gTLD extension– such as <.com> – does not affect a finding of confusing similarity with the trademark which appears in the domain name. See Virgin Enterprise Limited v. Stichting Open TLD WHOIS Proxy / Christine Crowley, WIPO Case No. D2018-0846 (finding that the addition of “limited” and “.com” does not distinguish a disputed domain name from the complainant’s trademarks and ordering the transfer of virginmobilelimited.com).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name, as legitimate interests are defined in Policy Paragraphs 4(c)(i)-(iii), arguing specifically that:-
Respondent has never been known as or referred to as “NUTANIX LIMITED” or any variation thereof and the current WHOIS record for the disputed domain name does not provide any identifying information for the Registrant;
Respondent is not authorized or licensed to use the NUTANIX mark in any fashion citing STMicroelectronics, Inc. v. UniQuip Plus, Inc., FA 1371892 (Forum Mar. 9, 2011) (concluding that the respondent was not “commonly known by” the disputed domain names based on WHOIS information and the fact that complainant had not authorized the respondent to register a domain name incorporating its mark);
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; nor is Respondent making a non-commercial fair use of the disputed domain name.
Complainant submits that the disputed domain name directs to a webpage which shows the use of the NUTANIX mark and advertisements for internet planning services, which include ecommerce solutions for businesses, search engine optimization consulting, and digital marketing solutions. In this regard, Complainant refers to screenshots of Respondent’s website as it appeared on October 21, 2019 which Complainant argues is illustrative of Complainant’s submissions that these services are in direct competition to Complainant’s services, including in particular Complainant’s retail specific services.
For the purposes of comparison, Complainant has adduced in evidence a copy of content on its own website presenting its retail specific services as: “Build unique experiences with the power of the cloud”; “Modernize your datacenter with Nutanix and put your focus on retail applications like omnichannel marketing to drive unique end-to-end customer experiences, higher revenues, and greater loyalty” and including a downloadable brochure titled “ENTERPRISE CLOUD SOLUTION FOR RETAIL”.
Complainant submits that it is well established that offering competing products or services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);
Complainant submits that the disputed domain name was registered and is being used in bad faith because Respondent was on notice of Complainant’s rights in the NUTANIX mark when it registered the disputed domain name; and Respondent is passing itself off as Complainant in an attempt to divert Internet users to Respondent’s website which misleadingly offers competing services.
Complainant asserts that it first adopted and first used the NUTANIX mark almost eight years ago in 2011, and secured its first federal registration for the mark in 2012, both long prior to May 11, 2017 when the disputed domain name was created and registered. Complainant argues that the registrant thus has at least constructive knowledge of Complainant’s prior rights, and given the success of Complainant’s NUTANIX brand – which is comprised of a fanciful term - the registrant almost certainly had actual knowledge as well.
Complainant adds that as described above, the disputed domain name resolves to a web page that prominently features the NUTANIX mark and text that advertises services in direct competition to those offered by Complainant. Complainant submits that Respondent is using the disputed domain name in bad faith by passing itself off as Complainant, using Complainant’s name and mark in an attempt to divert Internet users to Respondent’s website on which it offers competing services, See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Nasdaq, Inc. v. Maris Praulins / Empika Enterprise LTD, FA 1908001859832 (Forum Sept. 23, 2019) (finding printouts of the webpage available at the disputed domain name showing Complainant’s mark and a description of competing services to be proof of bad faith registration).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is in the business of selling computer and software goods and services with an annual revenue of USD $289 million and is the owner of an international portfolio of registered trademarks for its NUTANIX mark in Australia, Brazil, Canada, Chile, China, Colombia, European Union, Hong Kong, India, Indonesia, Israel, Japan, Malaysia, Mexico, New Zealand, Norway, Peru, Qatar, Russian Federation, Saudi Arabia, South Africa, South Korea, Switzerland, Taiwan, Thailand, Turkey, UAE and including:
United States registered trademark NUTANIX, registration number 4,151,659 registered on the Principal Register on May 29, 2012 for the following goods in international class 9: “Computer software and hardware for use in cloud computing, virtualization and data storage.”
United States registered service mark NUTANIX, registration number 4,882,958 registered on the Principal Register on January 5, 2016 for the following services in international class 42.” Computer services, namely, consulting in the field of computer hardware and software; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; repair of computer software; updating and upgrading of computer software for others; technical support services, namely, migration of datacenter, server and database applications, technical support services, namely remote administration and management of in-house and hosted datacenter devices, databased (sic) and software applications and remote branch office environments, consulting in the field of information technology, consulting in the field of virtualization technologies for enterprises and businesses, in class 42”.”
Complainant is the registrant of and uses several Internet domain names that incorporate its NUTANIX mark including <nutanix.com>, <nutanix.info>, <nutanix.org>, <nutanix.co>, and <nutanix.net>.
The disputed domain name <nutanixlimited.com> was registered on May 11, 2017 and resolves to a website that purports to offer services competing with Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the verification enquiry made by the Forum in this proceeding.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence of its rights in the NUTANIX trademark and service mark established through its ownership of the above-described portfolio of registered trademarks and its use of the mark in association with its computer and software goods and products.
The disputed domain name consists of the Complainant’s NUTANIX mark in entirety together with the descriptive term “limited” followed by the gTLD <.com> extension.
Complainant’s NUTANIX trademark is the initial and only distinctive element of the disputed domain name; the element “limited” would be taken by Internet users to designate the corporate status of the owner of the website or other online source or location for which the disputed domain is being used, and the gTLD extension may be ignored for the purposes of comparison in the circumstances of the present Complaint.
In the circumstances this Panel finds that the disputed domain name is confusingly similar to the trademark NUTANIX in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that on the evidence, Respondent has never been known as or referred to as “NUTANIX LIMITED” or any variation thereof; the current WHOIS record for the disputed domain name does not provide any identifying information for the Registrant; Complainant has not authorized or licensed Respondent to use its NUTANIX mark in any fashion; Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; nor is Respondent making a non-commercial fair use of the domain name at issue as the disputed domain name directs to a webpage which uses the NUTANIX mark without license or authority and contains advertising content competing with Complainant’s goods and services.
In such circumstances the burden of production shifts to Respondent to establish its rights or legitimate interests in the disputed domain name. In the absence of filing any Response or making any submissions, Respondent has failed to discharge the burden of production.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s trademark is a coined word and has no other meaning in the English language. The disputed domain name is composed of Complainant’s NUTANIX trademark and two non-distinctive elements. Taken together the elements of the disputed domain name have no significance except as a reference to Complainant’s distinctive trademark. It is implausible that the disputed domain name was created and registered for any purpose other than to reference Complainant’s name, business and trademark. On the balance of probabilities, the disputed domain name was registered in bad faith to take predatory advantage of Complainant’s goodwill and reputation.
On the uncontested evidence adduced Respondent is using the disputed domain name to resolve to a website which posts Complainant’s trademark without license or authority and contains content directly competing with Complainant’s goods and services. The presentation and content of Respondent’s website would give an Internet user the misleading impression that it is maintained by Complainant.
This Panel finds on the balance of probabilities that the disputed domain name has been used by Respondent in bad faith in an intentional attempt to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and of the products and services on Respondent’s web site.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutanixlimited.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________
James Bridgeman SC
Panelist
Dated: November 18, 2019
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