NetApp, Inc. v. Ankur Bharali / HostEdu Private limited
Claim Number: FA2211002019507
Complainant is NetApp, Inc. (“Complainant”), USA, represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ankur Bharali / HostEdu Private limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wenetapp.org>, <wenetapp.net>, <getnetapp.net>, <netappx.com>, <netappindonesia.com>, <netappid.com>, <netappcloud.org>, <netappapp.net>, and <netappapp.com>, registered with NameSilo, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 8, 2022; Forum received payment on November 8, 2022.
On November 8, 2022, NameSilo, LLC confirmed by e-mail to Forum that the <wenetapp.org>, <wenetapp.net>, <getnetapp.net>, <netappx.com>, <netappindonesia.com>, <netappid.com>, <netappcloud.org>, <netappapp.net>, and <netappapp.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2022 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@wenetapp.org, postmaster@wenetapp.net, postmaster@getnetapp.net, postmaster@netappx.com, postmaster@netappindonesia.com, postmaster@netappid.com, postmaster@netappcloud.org, postmaster@netappapp.net, postmaster@netappapp.com. Also on November 15, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has rights in the NETAPP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,844,772, registered May 25, 2004). The disputed domain names are confusingly similar to Complainant’s mark as each wholly incorporates the NETAPP mark adding generic, descriptive, and geographic terms, a letter, and the “.org,” “.net” and “.com” generic top-level-domains (“gTLDs”).
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent passes itself off as Complainant and offers competing services.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent passes itself off as Complainant. Respondent had actual knowledge of Complainant’s rights in the NETAPP mark prior to registration of the disputed domain names.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain names were registered on April 20, 2022.
2. Complainant has established rights in the NETAPP mark based upon registration with the USPTO (e.g., Reg. No. 2,844,772, registered May 25, 2004).
3. Respondent passes itself off as Complainant. The disputed domain names’ resolving websites mirror Complainant’s own website. The disputed domain names’ resolving websites feature Complainant’s stylized NETAPP mark, Arch Logo, and signature font, and offers cryptocurrency services purporting to be under Complainant’s NETAPP mark.
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 claims rights in the NETAPP mark based upon registration with the USPTO (e.g., Reg. No. 2,844,772, registered May 25, 2004). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant has established rights in the NETAPP mark.
Next, Complainant argues that the disputed domain names <wenetapp.org>, <wenetapp.net>, <getnetapp.net>, <netappx.com>, <netappindonesia.com>, <netappid.com>, <netappcloud.org>, <netappapp.net>, and <netappapp.com> are confusingly similar to Complainant’s mark as each wholly incorporates the NETAPP mark adding generic, descriptive, and geographic terms, a letter, and the “.org,” “.net” and “.com” gTLDs. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’).
The Panel notes that the <wenetapp.org>, <wenetapp.net>, <getnetapp.net>, <netappcloud.org>, <netappapp.net> and <netappapp.com> domain names incorporate Complainant’s mark in its entirety and add generic and/or descriptive terms “we,” “get,” “cloud,” and the “.org,” “.net,” “.com” gTLDs; <netappindonesia.com> and <netappid.com> domain names incorporate Complainant’s mark in its entirety and add the geographically descriptive term “Indonesia,” two-letter country code for Indonesia “ID” and the “.com” gTLD; and the <netappx.com> domain name incorporates Complainant’s mark in its entirety, adds the letter “X” and the “.com” gTLD. The Panel therefore finds that each of the disputed domain names is confusingly similar to Complainant’s mark under 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), then the burden shifts to Respondent to show 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 contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names prior to its registration, and Complainant has not given Respondent permission to use the disputed domain names. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The Panel notes that the unmasked WHOIS information lists “Ankur Bharali / HostEdu Private limited” as the registrant. There is no other evidence to suggest that Respondent is affiliated with Complainant and was authorized to use the NETAPP mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names.
Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or otherwise fair use as, instead, Respondent attempts to pass off as Complainant. Passing off can represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain names’ resolving websites, which offer cryptocurrency services purporting to be under Complainant’s NETAPP mark. Those websites feature Complainant’s stylized NETAPP mark, Arch Logo, and signature font. The webpage contents of all nine disputed domain names are identical. Complainant provides a screenshot of Complainant’s own website as well. The Panel therefore finds that Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant claims that Respondent registered and uses the disputed domain names in bad faith as Respondent attempts to pass off as Complainant. Use of a disputed domain name in connection with passing off behavior can evince bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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). As noted above, Complainant provides screenshots of the disputed domain names’ resolving websites, which show Respondent’s passing off behavior to offer services similar to those of Complainant. The Panel therefore finds that Respondent registered and uses the disputed domains in bad faith.
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s rights in the NETAPP mark prior to registration of the disputed domain names. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). 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.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). 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.”). The Panel infers, due to the notoriety of Complainant’s mark, the pattern of registration of nine disputed domain names incorporating Complainant’s mark in its entirety and the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s rights in the NETAPP mark prior to registration of the disputed domain names, which supports a finding of bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wenetapp.org>, <wenetapp.net>, <getnetapp.net>, <netappx.com>, <netappindonesia.com>, <netappid.com>, <netappcloud.org>, <netappapp.net>, and <netappapp.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 15, 2022
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