WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sybase, Inc. v. Rohit Mehrotra
Case No.�D2006-0251
1. The Parties
The Complainant is Sybase,�Inc., Concord, Massachusetts, United�States�of�America, represented by Foley�Hoag,�LLP United�States�of�America.
The Respondent is Rohit Mehrotra, Plano, Texas, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network�Solutions,�LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on February�28,�2006. On March�1,�2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March�6,�2006, Network Solutions, LLC 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 March�7,�2006. In�accordance with the Rules, paragraph�5(a), the due date for Response was March�27,�2006. The Response was filed with the Center on March�24,�2006.
The Center appointed William�R.�Towns as the Sole Panelist in this matter on March�31,�2006. 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 is a software vendor providing products offering technology solutions related to information management, development and integration, business solutions, and mobile solutions. The Complainant is the owner of the federally registered trademark SQL ANYWHERE with respect to computer software for applications development. The mark was registered with the United States Patent and Trademark Office (USPTO) on October�5,�1999, but the Complainant has used the SQL�ANYWHERE mark in commerce since as early as December�4,�1995, denoting such use with a superscripted ™ designation. The Complainant has enjoyed substantial sales of its SQL ANYWHERE software.
The Respondent is the owner of a multi platform text editing product called CRiSP. The Respondent’s product is used to edit text on various operating systems such as Windows, and to edit programs or databases written in different programming languages, including SQL. The Respondent registered the disputed domain name on September�8,�1997. The domain name currently resolves to a website from which the Respondent advertises and offers for sale his CRiSP product. The Respondent was a sales employee of the Complainant from July�19,�1993 to May�18,�1998.
5. Parties’ Contentions
A. Complainant
The Complainant describes itself as one of the largest software vendors in the world, offering technology solutions in areas of information management, development and integration, business solutions, and mobile solutions since 1984. According to the Complainant, it serves more than 40,000 corporate customers in 60 countries, and also partners with well known industry leaders such as HP, Intel, NEC, IBM, Apple, PeopleSoft, SAP and Sun.
The Complainant obtained federal registration of it SQL ANYWHERE mark on October�5,�1999, but has used the mark in commerce since December�1995, continuously denoting such use with a superscripted ™ designation prior to the issuance of the federal registration for the mark. According to the Complainant, as of September�1997 customers worldwide had purchased licenses for 146,113 copies of the SQL ANYWHERE software, including 54,475 in North America. Given widespread recognition of the SQL ANYWHERE product and the trademark usage of the name, the Complainant asserts that it established common law rights in the mark long before the Respondent’s September�8,�1997 registration of the disputed domain name.
The Complainant maintains that the disputed domain name is identical or confusingly similar to its SQL ANYWHERE mark. The Complainant asserts that the Respondent, by virtue of his employment with the Complainant from July�19,�1993 to May�18,�1998, as a Regional Technical Presales Manager, was involved in sales activities related to the SQL ANYWHERE product, and was aware of the Complainant’s rights in the SQL ANYWHERE mark when he registered the disputed domain name in September�1997, while still employed by the Complainant. According to the Complainant, the Respondent had no right as an employee to register the Complainant’s trademarks as a domain name. Accordingly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. Further, the Complainant contends that the Respondent is not commonly known by the disputed domain name, and that the Respondent had merely “parked” the domain name when he received the Complainant’s March�17,�2005 cease and desist letter.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent registered a domain name identical to the Complainant’s mark, without having any rights or legitimate interest in the domain name, in order to attract internet users to the Respondent’s own commercial website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the Complainant’s SQL ANYWHERE mark. The Complainant also alleges that the Respondent made repeated extortionate payment demands in response to the Complainant’s good faith efforts to resolve the dispute short of arbitration.
B. Respondent
The Respondent maintains that the disputed domain name is not identical to the Complainant’s SQL ANYWHERE mark because the mark is comprised of two words while the domain name is a single word spelled as “SQLAnywhere”. The Respondent also observes that he registered the disputed domain name prior to the federal registration of the Complainant’s mark, and he contends that the Complainant has a history or registering trademarks of possible names with no real intent of using on the name on the internet.
The Respondent maintains that he has rights and legitimate interests in the disputed domain name. According to the Respondent, he registered the disputed domain name, well in advance of the federal registration of the Complainant’s mark, in order to use in connection with the marketing of his CRiSP product, which can be used to edit SQL code and data files generated by running SQL code against multiple DBMS. The Respondent further asserts that he has always used the disputed domain name to redirect Internet users to his domain, except for a brief interruption during a recent change of ISP providers.
The Respondent denies any bad faith. He maintains that he does not market any products in competition with the Complainant’s SQL ANYWHERE product. He notes that during the eight years he has owned the disputed domain name prior to his receipt of the Complainant’s cease and desist letter, he never approached the Complainant with an offer to sell the domain name. He claims that he explained to the Complainant’s attorney that the product he was selling on the website had nothing to do with the Complainant’s product sold under the SQL ANYWHERE mark, and offered to post a disclaimer on his website. The Respondent further explained to the Complainant’s attorney that the financial loss of sales he would incur should he transfer the domain name would be significant. The Respondent alleges that the Complainant had no real intention of settling the case, but merely wants to take over a domain name that it knowingly never registered.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No.�D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No.�D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs�169 and 170. Paragraph�15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph�4(i).
Paragraph�4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph�4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph�4(a), a number of panels have concluded that paragraph�4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
B. Identical or Confusingly Similar
There is no question for purposes of paragraph�4(a)(i) that the disputed domain name is identical or confusingly similar to the Complainant’s SQL ANYWHERE mark. The disputed domain name incorporates the Complainant’s mark in its entirety. The critical inquiry under the first element of paragraph�4(a) is simply whether the mark and domain name, when directly compared, have confusing similarity. The Panel finds that to be the case here. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.�D2000-0662 (domain name incorporating mark in its entirety is confusingly similar).
Further, the Complainant has established rights in the mark through federal registration and through continuous use since as early as December�4,�1995. It is well settled that the term “trademark or service mark” as used in paragraph�4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No.�D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No.�D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No.�D2001-0218.
Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The extensive or continuous use of a designation in advertising may establish its significance as an identifier of the user’s goods or services, particularly where the designation is not merely descriptive of the goods or services. See Restatement (Third) of Unfair Competition � 18 (1995). The Complainant has submitted evidence clearly establishing its continuous use of SQL ANYWHERE as a mark since at least December�4,�1995.
C. Rights or Legitimate Interests
The disputed domain name is identical to the Complainant’s SQL ANYWHERE mark. At the time the Respondent registered the disputed domain name, he was a sales employee of the Complainant, and thus in a position to be aware of the Complainant’s rights in the mark, and to be knowledgeable of the widespread recognition of the Complainant’s SQL ANYWHERE product based on sales and marketplace response. The Respondent registered and has used the disputed domain name, without the Complainant’s authorization or consent, to direct Internet traffic to the Respondent’s commercial website, where the Respondent sells a computer software program that can be used to edit SQL databases created using the Complainant’s SQL ANYWHERE product.
The Panel concludes that the Complainant had made a prima facie showing under paragraph�4(a)(ii), requiring the Respondent to come forward with evidence under paragraph�4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No.�D2000-0020.
Pursuant to paragraph�4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has failed to set forth any circumstances demonstrating that he has rights to or legitimate interests in the disputed domain name. The Respondent registered the domain name, which is identical to the Complainant’s mark, while he was employed by the Complainant, under circumstances leaving little question about whether the Respondent was aware of the Complainant’s rights in the mark. Although the Respondent claims to have used the disputed domain name for purposes of marketing his CRiSP product prior to any notice of this dispute, such use does not constitute use of the disputed domain name in connection with a bona fide offering of goods and services within the meaning of paragraph�4(c)(i). In determining whether an offering of goods or services is bona fide under paragraph�4(c)(i), the dispositive question is often whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under paragraph�4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No.�D2000-1840 (for�offering under paragraph�4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph�4(a)(iii)).
As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No.�D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a respondent shown to be aware of this connection suggests “opportunistic bad faith”. Under the circumstances of this case, the Panel concludes that the Respondent registered the mark primarily for the purpose of capitalizing on the trademark value inherent in the SQL ANYWHERE name.
D. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No.�D2004-0230.
The Panel concludes from the circumstances of this case as discussed above that the Respondent registered and is intentionally using the disputed domain name in bad faith under paragraph�4(b)(iv) of the Policy, in an attempt to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s SQL ANYWHERE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the product offered for sale on the website. As noted above, the very use of the domain name by Respondent under the circumstances of this case is indicative of “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov, WIPO Case No.�D2001-0492.
7. Decision
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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: April�14,�2006
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