WIPO Domain Name Decision D2009-0383 for trimit.org

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION CORNATOR A/S v. ERP Solutions, Inc. Case No. D2009-0383 1. The Parties

The Complainant is Cornator A/S of Viborg, Denmark, represented by Patrade A/S, Denmark.

The Respondent is ERP Solutions, Inc. of Hollywood, Florida, United States of America. 2. The Domain Name and Registrar

The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2009. On March 24, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On March 25, 2009, Melbourne IT Ltd 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” or “UDRP”), 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 April 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2009. The Response was filed with the Center on April 7, 2009, in the terms explained below.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on May 4, 2009. 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.

Before considering the merits of the case, the Panel would like to state that although the email that the Respondent sent to the Center on April 7, 2009, along with the email sent by Khaled Abusaif to the Center on April 8, 2009, may be deemed administratively deficient in different aspects, the Panel finds that in the circumstances of the case, and without diminishing any provision of the Policy and the Rules, said communication will be treated as a Response (seeWIPO Case No. D2008-1426).

The Panel would also like to note that Mr. Khaled Abusaif has not been listed as the registrant nor has the Respondent explained the relationship between them. However, the Panel is persuaded that as per the Respondent's and Mr. Abusaif's emails, as well as from the information provided by the Whois Service (in which a Mr. Khaled Abusat -probably a misspelling of Abusaif Khaled- ,is listed as the Admin Contact for the disputed domain name), is the underlying registrant of the disputed domain name. 4. Factual Background

The Complainant sells Microsoft software among which it sells the TRIMIT solution.

The Complainant has registered the domain names and

Furthermore, the Complainant owns a Community registration for the trademark TRIMIT, in classes 9, 35, 41 and 42.

On January 19, 2009, the Respondent registered the disputed domain name . 5. Parties' Contentions A. Complainant

The Complainant contends the following:

The Complainant sells Microsoft software among which it sells the TRIMIT solution.

The Complainant has registered the domain names and

Furthermore, the Complainant contends that the respondent has registered the disputed domain name after becoming acquainted with the Complainant's services during the International Microsoft Conference in Copenhagen.

The disputed domain name is identical to the Complainant's mark TRIMIT.

The disputed domain name resolves to the Respondent's website which is used to offer for sale goods that compete with those offered by the Complainant.

The disputed domain name was registered primarily for the purpose of selling Complainant's competing products and misusing the Complainant's trademark and company name.

Finally, the Complainant contends that by using the disputed domain name, the Respondent is intentionally attempting to obtain commercial gain by attracting Internet users to the Respondent's website, or other online locations, by creating the likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. B. Respondent

The Respondent contends the following:

Part of Respondent's business includes registering and hosting domain names, and developing web applications.

Khaled Abusaif, one of its clients, instructed the Respondent to register the disputed domain name .

The disputed domain name was registered in connection with its client's development of a non profit organization to help poor and hungry people around the world; and that TRIMIT would mean “Trim a portion of your meal at the restaurant to feed the hungry”.

Moreover, the Respondent contends the disputed domain name was parked at its datacenter in order to avoid monthly costs.

Finally, the Respondent contends that the disputed domain name has no relation with software. 6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar

The Complainant has proven to the Panel's satisfaction that it owns a Community registration for the trademark TRIMIT.

The Panel finds that the disputed domain name is identical and confusingly similar to the Complainant's trademark TRIMIT. Therefore, the Complainant has fulfilled the first requirement under the Policy. B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect to the disputed domain name. Paragraph 4(c) of the Policy sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name. The provision reads as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you (Respondent) of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you (Respondent) are making a legitimate non-commercial 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.”

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of proof shifts to the respondent. The respondent must demonstrate to the panel's satisfaction its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and therefore, the burden of proof has effectively been shifted to the Respondent.

The Respondent contends that disputed domain name is associated with one of its client's development of a non profit organization to help poor and hungry people around the world. However, the Panel is not satisfied that Mr. Abusaif´s blog post –apparently posted one year ago- concerning proposed plans to form a non profit organization demonstrates a bona fide offering of goods or services. Neither the Respondent nor Mr. Abusaif have made any progress toward offering goods or services, and Mr. Abusaif has expressly admitted that he has “not yet start[ed] that charitable organization.” (see email from Khaled Abusaif of April 8, 2009).

On the other hand, the Complainant has proven to the Panel's satisfaction that the disputed domain name resolves to the Respondent's website where it renders competing services to those offered by the Complainant (i.e. the sale of Microsoft software). Therefore, the Panel finds that such use cannot be considered a bona fide offering of goods or services, or fair or non-commercial use of the disputed domain name, as set forth in paragraph 4(c)(iii) of the Policy.

Moreover, there is no evidence showing that the Respondent is commonly known as or identified by “trimit”. As previously stated, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, and in absence of a rebuttal by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy establishes various circumstances the Panel may use to evaluate whether the registration and use of a domain name was in bad faith.

As above-referenced, the Complainant owns a Community registration for the trademark TRIMIT.

Moreover, the Complainant has proven to the Panel's satisfaction that the Respondent renders competing services to those offered by the Complainant (i.e. the sale of Microsoft Software). Furthering this connection, the Complainant contends that both the Complainant and the Respondent have participated in an International Microsoft Conference in Copenhagen. The Respondent has not denied this statement.

In view of the foregoing reasons, the Panel finds that the Respondent was most likely aware of the Complainant and its trademark TRIMIT when it registered the disputed domain name , which further evidences bad faith registration.

Additionally and as previously mentioned, the disputed domain name resolves to the Respondent's website, used to offer Microsoft software.

Therefore, the Panel finds that by using the disputed domain name , the Respondent is intentionally attempting to obtain commercial gain to attract Internet users to the Respondent's website by creating the likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

For these reasons, the Panel finds that the Respondent both registered and uses the disputed domain name in bad faith, and that the Complainant has therefore satisfied the third requirement of (4)(a) of the Policy. 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.

Miguel B. O'Farrell
Sole Panelist

Dated: May 18, 2009

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