WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SmoothWall Limited v. Dry Wall Inc, Logan Donners
Case No. D2008-0312
1. The Parties
Complainant is SmoothWall Limited, of United Kingdom of Great Britain and Northern Ireland, represented by Daniel Barron, United Kingdom of Great Britain and Northern Ireland.
Respondent is Dry Wall Inc, Logan Donners, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Instinct Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2008. On March 4, 2008, the Center transmitted by email to Instinct Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On March 14, 2008, A, on behalf of Instinct Solutions, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 17, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 8, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on April 15, 2008. 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
Complainant is the owner of United States Trademark Registration No. 3267663 for the trademark SMOOTHWALL registered on the Principal Register on July 24, 2007 in respect of the goods relating to “computer software and programs for computer security and network services; printed matter and printed publications relating to the previously described wares”; and in relation to the services “training in the use and operation of computers and computer software; and design of computer software for the purpose of computer security and networking…”. The registration has a Priority Date of July 16, 2003.
The domain name in dispute was registered by Respondent on December 23, 2007.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that the domain name in dispute, , consists of Complainant’s registered trademark SMOOTHWALL and is therefore confusingly similar to Complainant’s registered trademark SMOOTHWALL.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain name in dispute or a name corresponding to the domain name in dispute in connection with a bona fide offering of goods or services.
Complainant further submits that Respondent has not been commonly known by the domain name in dispute, even if the Respondent has acquired no trademark or service mark rights.
A.3 Registered and Used in Bad Faith
Complainant submits that the webpage associated with the domain name in dispute includes a link and informs visitors that the domain name in dispute may be for sale and invites the visitors to make an offer in US dollars. Complainant submits that this indicates that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.
Complainant states that it is authorized to use and has used its registered trademark SMOOTHWALL in connection with, but not exclusively with, firewall appliances, online schools, computer firewalls, SmoothWall in Linux, firewalls, network security, proxy servers and bandwidth. By using the domain name, Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s web site.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is registered as the owner of the registered trademark SMOOTHWALL registered on the Principal Register in the United States of America in relation to the goods and services described in paragraph 4 above. Complainant’s registered trademark was registered prior to the date of registration of the domain name in dispute on December 27, 2007.
The domain name in dispute, , consists of Complainant’s trademark for SMOOTHWALL in combination with the top level domain descriptor “. com”. WIPO Panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that the domain name in dispute is identical or confusingly similar to Complainant’s SMOOTHWALL trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto.
The web page associated with the domain name in dispute displays a series of sponsored links relating to software in the fields of network monitoring, firewalls and computer security offered by competitors of Complainant. UDRP decisions have consistently found that registrants that “park” their domain names that are confusingly similar to a trademark by using redirecting services with links to the goods or services of a complainant or complainant’s competitors have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
C.1 Domain Name Registered in Bad Faith
By reason of Complainant’s use of its trademark SMOOTHWALL in association with the sale of computer software for Internet security and associated services for which the marks are registered, Complainant’s trademark for SMOOTHWALL was widely known prior to registration of the domain name in dispute on December 23, 2007. Complainant’s registered trademark for SMOOTHWALL was registered prior to the date of registration of the domain name in dispute. The word “smoothwall” is a distinctive word relative to computer software for Internet security.
Disregarding the gTLD “.com”, the domain name at issue, , consists of Complainant’s trademark SMOOTHWALL in its entirety. It is difficult to conceive how Respondent could have created the domain name in dispute without prior knowledge of Complainant’s registered trademark for SMOOTHWALL. Respondent was invited to file a Response. Respondent’s failure to explain any reason for choosing the domain name strengthens the Panel’s inference that Respondent registered the domain name in dispute with knowledge of Complainant’s Internet security software being sold in association with Complainant’s trademark SMOOTHWALL.
The Panel finds that Respondent registered the domain name in dispute in bad faith.
C.2. Domain Name Used in Bad Faith.
Respondent’s use of the domain name in dispute to resolve to a website containing links to websites belonging to Complainant’s competitors constitutes use of the domain name in bad faith. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038. (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”).
Respondent is using the confusingly similar domain name to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent used the domain name in dispute in bad faith.
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 Complainant.
Ross Carson
Sole Panelist
Date: April 28, 2008
Full & Egal Universal Law Academy