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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alterian Technology Limited v. Alterian
Case No. D2007-1521
1. The Parties
The Complainant is Alterian Technology Limited, United Kingdom of Great Britain and Northern Ireland, represented by Moore Legal, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Alterian, New Zealand, represented by Kelvyn Alp, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <alterian.net> is registered with Go Daddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2007. On October 18, 2007, the Center transmitted by email to Go Daddy.com, Inc a request for registrar verification in connection with the domain name at issue. On October 18, 2007, Go Daddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 November 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2007. The Respondent sent an e-mail communication to the Center on November 2, 2007. The Center sent an e-mail communication to the Respondent on November 6, 2007 acknowledging the Respondent's November 2, 2007 e-mail and asking the Respondent to confirm that the communication is the Respondent's complete Response. The Center informed the Respondent that in the absence of such confirmation and if no further communication was received from the Respondent by the Response deadline, then the November 2, 2007 e-mail from Respondent will be considered as the Response and the Panel would be appointed.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 30, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant owns CTM Trademark Registration No 000636720, registered on April 6, 1999 for the ALTERIAN trademark and service mark in connection with:
Nice Classification: 9: Computer Software for data analysis, storage, management and manipulation;
Nice Classification: 16: Manuals, training guides, instructional material; stationery; all for use with computer software for data analysis storage, management and manipulation; and
Nice Classification: 42: Computer consultancy and support services; computer programming; computer integration services; on-line help facilities and Internet support facilities
The Complainant also owns United States Registration No. 2469962, registered on July 17, 2001 for the ALTERIAN trademark and service mark in connection with:
International Class 09: Computer software for data analysis, storage, management and manipulation;
International Class 16: Manuals, training guides, instructional material; stationery; all for use with computer software for data analysis storage, management and manipulation; and
International Class 42: computer consultation, computer programming, and computer integration services, on-line computer assistance, and creating and hosting web sites for others.
The Complainant has owned the domain names <alterian.com> and <alterian.co.uk> since September 1997
The Respondent registered the Domain Name at issue on February 21, 2006.
The Complainant first notified the Respondent of the dispute in a letter dated January 4, 2007.
5. Parties' Contention
With respect to paragraph 4(a)(i) of the Policy, Complainant states that:
It owns a CTM registration, a United States registration as well as other registrations for the ALTERIAN trademark and service mark;
Since the Respondent has chosen Euros as his default currency, then the Complainant has chosen the Registered Trademark in Europe for the purposes of these proceedings;
The Respondent's sign “Alterian” is identical to the Registered Trademark and is being applied to goods and services that are identical with goods and services covered by the Community Trademark. As a result, “there is a likelihood of confusion on the part of the public, which includes the likelihood of association with the Community Trademark.”
With respect to paragraph 4(a)(ii) of the Policy, Complainant states that:
The Respondent has no rights or legitimate interests in respect of the Domain Name;
The domain name was registered on February 21, 2006;
The Respondent's use being infringing use cannot be “bona-fide” use and certainly can not be bona-fide use, if it is used in bad faith;
The domain name is registered to “Alterian”, but the website at “www.alterian.net” appears to identify the “company” behind that website as “Alterian Privacy Inc”. The Complainant has been unable to identify any such company as “Alterian” or “Alterian Privacy Inc”
There is no reasonable basis to conclude that the Respondent has been “commonly known” as the domain name;
The Complainant has made trademarks searches in New Zealand, at the Community Trade Marks Registry in the EU and in the USA and has not found any trademarks containing the word “Alterian” relating to the Respondent;
The Complainant believes that the Respondent does not hold any trademark or other right consisting in whole or in part in the denomination “Alterian” which is the distinctive part of the disputed domain name; and
The Respondent is clearly making “commercial use” as can be seen from the website at “www.alterian.net”. The Respondent receives money for providing the goods and services advertised on the website.
With respect to paragraph 4(a)(iii) of the Policy, Complainant states that:
It is not clear to the Complainant whether the Respondent registered the domain name or obtained the transfer of the domain name already registered to another;
The Respondent must have had actual or constructive notice of the Complainant's trademark rights at the time he registered or obtained the domain name because:
i) Section 22 of the United States Trademark Act states that “registration of a mark on the principal register (...) shall be constructive notice of the registrant's claim of ownership thereof”;
ii) when registering the domain with its Registrar, or seeking transfer of the name with the Registrar, the Respondent would have conducted a search revealing available names. That search would have informed Respondent that, for example, <alterian.com> was registered to the Complainant;
iii) It is inconceivable that the Respondent did not “Google” the word “Alterian” in the process of registering or obtaining the domain name. Any rudimentary search would have given the Respondent notice of the Complainant's rights.
In the light of the foregoing, the Respondent had actual notice of the Complainant's common law rights and at least constructive notice of the Complainant's Registered Trademarks, which the Respondent could and should have identified through trademark searching.
The Respondent's use is infringing use and can not be bona fide.
The Respondent, in an unverified email to the Center, states that:
The Complainant has conveniently arranged the correspondence in the Annex 6 in a manner that portrays a dishonest account of the correspondence between the Complainant and the Respondent.
The Complainant has failed to address the Respondent's requests for proof of claim.
The Respondent does not consent to being party to these proceedings as there is no dispute.
The domain name <alterian.net> has been lawfully obtained as an available domain name and therefore purchased.
The Respondent is not a signatory of WIPO or any other organisation and as such is under no obligation to take part in these proceedings.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
The Respondent's email to the Center does not comply with Rules paragraph 5(b)(viii), which requires that a response be certified as follows:
Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.
Unverified emails to the Center do not comply with this requirement. Dynamic Cassette International Ltd. v. Kombud,
WIPO Case No. D2002-0262 (Uncertified email responses deemed a default: “The Panel wishes to underline that those requirements are not empty formalities; on the contrary they are there in order to ensure a fair and transparent proceeding.”)
Under the circumstances of this case, the Panel does not consider the Respondent's invective laden emails as sufficiently trustworthy to be treated as a response to the Complainant's allegations or evidence. However, a respondent's default does not automatically result in a decision in favor of the complainant. While a panel may draw negative inferences from the respondent's default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064.
The Respondent's protest that he or it has not consented to be bound by these proceedings is wrong. When the Respondent registered the domain name at issue, he agreed to be bound by the Policy, which requires that a domain name applicant submit to mandatory administrative proceeding in the event that a third party asserts a claim such as the Complainant asserted here, Policy paragraph 4(a). The instant action proceeds under the authority of the UDRP as accepted by the Respondent when he registered the disputed domain name.
A. Identical or Confusingly Similar
Given the existence of the registered trademarks in the European Union and in the United States for the mark ALTERIAN, and the Complainant's alleged use of the mark in connection with the Complainant's products and services long before the domain name at issue was registered, the Panel finds that the Complainant has trademark rights in the ALTERIAN trademark.
The Panel also finds that <alterian.net> is confusingly similar to a trademark or service mark in which the Complainant has rights. Specifically, the Panel finds that <alterian.net> is confusingly similar to the Complainant's ALTERIAN mark since the domain name consists entirely of the Complainant's registered mark and differs from the Complainant's registered mark only in that it contains the non-descriptive gTLD domain name suffix “.net”. It is well established that the addition of a gTLD does not avoid a finding of confusing similarity. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
B. Rights or Legitimate Interests
A complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Morgan Freeman v. Mighty LLC,
WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd,
WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110.
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the domain name at issue. With respect to paragraph 4(c)(i) of the Policy, the Complainant alleges that there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In view of the Respondent's failure to respond to the Complainant's allegations, the Panel draws negative inferences against Respondent on this point.
The Panel accepts the Complainant's verified and unrebutted statement that it has been unsuccessful in locating the business records for this business and the Respondent has not provided such records. Tekni-Plex, Inc. v. Wan-Fu China, Ltd.,
WIPO Case No. D2007-1065 (“By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.”); Wragge & Co LLP v. Domain Drop S.A.,
WIPO Case No. D2007-1286 (“Respondent's failure to respond to the case made in the Complaint allows the Panel to presume that Respondent lacks rights and legitimate interests in the disputed domain names.”) Respondent indicates in his communication with Complainant that “it's not registered in any jurisdiction that recognizes the blood sucking leeches like you that feed of the confusion and ill-informed positions of others.” This assertion, even though uncertified, is consistent with the Panel's finding that Respondent has no rights or legitimate interests in the accused domain name.
Accordingly, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered the domain name in bad faith. The trademark registrations of record confirm the Complainant's allegations that it had long been using its ALTERIAN mark when the Respondent registered the disputed domain name. Because the Respondent failed to file the required verified response, the Panel has no admissible evidence to consider as a rebuttal to the Complainant's persuasive allegations that the Respondent must have been aware of the Complainant's rights and knowingly infringed the Complainant's trademark when it registered the subject domain name.
Moreover, paragraph 2 of the Policy implicitly requires a good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of law or of the Policy. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering [*14] the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.
The Respondent here registered a domain name confusingly similar to the Complainant's mark. The Respondent has not offered a legitimate reason for doing so. On the contrary, he denies any obligation to do so. Under the circumstances of this case, the Panel concludes, therefore, that the Domain Name was registered and used in bad faith within the meaning of paragraph 4(b) of the Policy. Fifth Third Bancorp v. Joseph Robinson,
WIPO Case No. D2006-1073.
It is evidence of bad faith registration and use that a respondent has “intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Policy paragraph 4(b)(iv).
The Respondent has not properly rebutted the allegation that it used the Complainant's trademark to attract users to the Respondent's website where it offers products covered by the Complainant's trademark registrations. At the time the Complaint was filed and at the time of this Decision, the disputed domain name resolves to a page that offers visitors software products that the Complainant alleges to be covered by the asserted trademark registrations. The Complainant alleges, and the Respondent has not properly denied, that this is evidence under Policy paragraph 4(b)(iv) of bad faith use of the accused domain name. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan,
WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent's registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants' website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions also support this conclusion.”) See also Edmunds.com, Inc. v. Ult. Search Inc.,
WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”). This is evidence of the Respondent's intention to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
Accordingly, the Panel finds for the Complainant on the third element of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <alterian.net> be transferred to the Complainant.
Lawrence K. Nodine
Dated: December 17, 2007.