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Autoprof.com, Inc. t/a Autoprof v. Mukul Haash
Case No. D2005-0064
1. The Parties
The Complainant is Autoprof.com, Inc. t/a Autoprof, Portsmouth, United States of America.
The Respondent is Mukul Haash, Connaught Place, Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <profilemaker.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2005. On January 19, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the subject domain name. On January 20, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on January 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 14, 2005. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on February 15, 2005.
The Center appointed Edward C. Chiasson Q.C. as the
sole panelist in this matter on February 23, 2005. The panelist submitted a
Statement of Acceptance and Declaration of Impartiality and Independence, as
required by the Center to ensure compliance with the Rules, paragraph 7. The
Panel finds that it was properly constituted.
4. Factual Background
The following information derives from the Complaint.
The Complainant holds a federally registered trademark in PROFILE MAKER, Registration No. 2339341, under the following uses: IC 009 and US 021, 023, 026, 036 and 038 – computer operations software for use in computer networks.
On March 9, 1998, the Complainant’s predecessor in interest, Automated Profile Management, LLC, filed an application for the registration of the PROFILE MAKER mark, which registration occurred on April 4, 2000. On August 31, 2000, this registration was transferred to the Complainant by a merger of Automated Profile Management into AUTOPROF. That Certificate of Merger was recorded with the United States Patent and Trademark Office (“USPTO”) on November 15, 2004.
The Complainant also has filed an application for registration of the trademark PROFILEMAKER, Serial No. 78487769, under the following uses: IC 009 and US 021, 023, 026, 036 and 038 – computer software for management of application software configuration settings over a global computer network; and downloadable software for management of application software configuration settings over a global computer network. This application was filed on September 22, 2004.
Although the Complainant generally uses the term “Profile Maker” to describe the various iterations of its software of that same name, it frequently uses logos and typefaces on its website and in other marketing material that blur the distinction between the two words and can be read as one word, “ProfileMaker.”
The Complainant has been using the term Profile Maker to describe various generations of its network management software continuously since 1998. It has advertised its software under that name on its website “www.autoprof.com” since January 1998, and argues that it has achieved distinctiveness in the computer network software market for the name Profile Maker. Its current iterations of Profile Maker, Profile Maker 8 Desktop, Outlook Profile Maker 8 and Profile Maker 8 Professional have continued the evolution of the Complainant’s network management software in network management and computer configuration under the Profile Maker trademark.
The prior owner of the subject domain name had copied the main web page for “www.autoprof.com”, the website of the Complainant. The prior owner also had disabled various icons and links shown on the web page. For example, an Internet user that visited the subject domain name in the mistaken belief that it was the website for the Complainant or its product Profile Maker, would click on the Profile Maker link in the middle of the screen and be met with the message “this page cannot be found.” The same experience greeted visitors that attempted to click on the link for the Policy Maker software or the link for expert reviews.
On November 17, 2004, the Complainant sent a cease and desist letter via Federal Express and email to the prior owner of the domain name. The Complainant had obtained prior owner’s contact information through a “whois” search on eNom.com for the website to which the subject domain name resolved. The prior owner refused delivery of the cease and desist letter. Shortly after the Complainant sent the cease and desist letter to the prior owner, he transferred the domain name to the Respondent.
Upon transfer of the subject domain name to the Respondent, the website to which the subject domain name resolves retained its character as a malfunctioning copy of the Complainant’s website at “www.autoprof.com”. Using the email and street addresses listed on eNom.com, on December 6, 2004, the Complainant sent a cease and desist letter to the Respondent demanding transfer of the subject domain name. On or about December 23, 2004, the subject domain name was deactivated1 and the web page was removed, but the Respondent did not agree to transfer the domain name to the Complainant.
The Respondent did not participate in this proceeding.
5. Parties’ Contentions
The Complainant relies on its trademark registration and use of the words “profile” and “maker” and contends that the subject domain is identical to them.
Noting that the only use of the subject domain name by the Respondent and its predecessor has been to disrupt and confuse communications concerning the Complainant’s and its products, the Complainant states that the Respondent does not have a legitimate interest in the subject domain name. It also points to the fact that the Respondent appears not to do business using the subject domain name and is not known by it.
Bad faith is said to be illustrated by the fact of registration and use linked to the Complainant and its products, the transfer of the subject domain name when the Respondent’s predecessor was confronted by the Complainant and the lack of any direct response to the Complainant’s letters.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has trademark rights to the mark PROFILE MAKER through registration and use. The subject domain name uses the mark and adds “.com”. The use of “.com” is of no legal significance. The subject domain name is identical to the Complainant’s marks.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The website to which the subject domain name resolves has been used directly to affect the Complainant and its interests. The Respondent appears to have no other interest. It is not known as the subject domain name. When confronted by the Complainant, the Respondent apparently deactivated the subject domain name and removed the website to which the subject domain name resolves.
The Complainant has made out a prima facie case under this element, one that Respondent has not responded to.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were not to do so, it would be subject to the usual inferences that flow from not unreasonable allegations of fact made by a complainant.
A finding that a respondent does not have a legitimate interest in a domain name which is identical to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that are the basis for the legitimate interest finding may be relevant to the bad faith inquiry.
The registration of a domain name that is identical to the mark of another is not per se bad faith, but it raises that question. The use of the domain name for no apparent legitimate purpose also is of concern.
Distorting and using the Complainant’s webpage at the website to which the subject domain name resolved, is mischief which calls into question the bona fides of registration and its bad faith use. It is clear that Respondent knew of the Complainant’s mark when registering the disputed domain name.
The transfer of the subject domain name to the Respondent as an apparent response to the Complainant’s letter and the deactivation of the subject domain name and removal of the website to which it resolved in response to the second letter, also suggest bad faith.
The Respondent knew of the Complainant’s mark when registering the disputed domain name, and acted in a manner that would disrupt Complainant’s business.
The Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(iii) of the Policy.
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant seeks transfer to it of the subject domain name. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.