WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bluearc Corporation v. Blue Arc Case No. D2010-0181 1. The Parties
The Complainant is Bluearc Corporation of San Jose, California, United States of America, represented by Baker & McKenzie, United States of America.
The Respondent is Blue Arc of Izmir, Turkey, represented internally. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2010. On February 9, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On February 9, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 18, 2010. 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” 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 February 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2010. The Response was filed with the Center on March 9, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on March 15, 2010. 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 in this instance is Bluearc Corporation, a Delaware corporation which was founded in 1999. The Complainant is a provider of high performance unified network storage systems to entities in a number of sectors including entertainment, film and media, electronic discovery, the government, oil and gas and the life sciences markets. These services include but are not limited to storage system design and implementation services as well as the use of the storage systems with websites and other Internet services. As evidenced by the accompanying Annexes, the Complainant holds a number of trade and service marks to BLUEARC around the world dating back to 2001. The Complainant also has domain name registrations for , and .
The Respondent in this case is Blue Arc-Advanced IT Solutions, a company registered in Turkey. The Respondent contends, and a WhoIs database search confirms, that the disputed domain names of and were registered on June 10, 2006 and April 30, 2009 respectively. 5. Parties' Contentions A. Complainant
The Complainant is a Delaware corporation that was founded in 1999. The Complainant began using the BLUEARC trademark in 2001 and has registered a number of trade and service mark registrations for BLUEARC in connection with its business all around the world. The Complainant has also registered the domain names of , and in connection with its business.
The Complainant notes that the disputed domain names of and are confusingly similar to the Complainant's BLUEARC trademark. The Complainant contends that they have used BLUEARC since 2001 and additionally that the disputed domain names are confusingly similar in terms of sound, appearance and commercial impression to BLUEARC. Due to the fact that the disputed domain names embody the entire BLUEARC trademark, the Complainant argues that there is a confusing similarity with its trademark.
The Complainant also argues that the Respondent's use of the disputed domain names has the potential to divert Internet traffic from the Complainant's website and to create the false impression of an association or relationship with the Complainant. As a result, the disputed domain names are confusingly similar and create a likelihood of consumer confusion.
In arguing the next element under the Policy, the Complainant notes that both and were registered some time after the Complainant initially began using the BLUEARC trademark in its business in 2001. Additionally, the Complainant argues that neither disputed domain name is the subject of any trademark or service mark registration or any other business that the Respondent has rights to. Accordingly, in light of the numerous registrations for BLUEARC, as well as the goodwill, reputation and notoriety associated with the Complainant, it is impossible for the Respondent to legitimately use the disputed domain names.
The Complainant notes that the services being offered by the Respondent on the websites at the disputed domain names include services such as website construction services, interactive services and other advertising services. The Complainant contends that such a use is not a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain. Rather the Respondent is utilizing the disputed domain names to mislead and divert consumers by creating an initial impression of association with the Complainant for the purposes of the Respondent's commercial gain. As a result the Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain names.
In arguing the final element of the Policy, the Complainant argues that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the incorporation of another party's famous mark does not confer a legitimate interest in a domain name but rather constitutes bad faith. The Complainant avers that the wide breadth of the use of the Complainant's trademark around the world and its numerous registrations in countries such as the United States, the United Kingdom of Great Britain and Northern Ireland and Turkey has resulted in the BLUEARC trademark becoming famous. The Complainant also points out that they have no relationship with the Respondent and have not licensed or authorized them to use the BLUEARC trademark.
These factors combined with the resulting similarity between the Complainant's trademark and the Respondent's domain names, the services being offered and both Parties' customer base evidences bad faith. The Complainant also argues that the Respondent is intentionally attempting to target Internet users for commercial gain and to create a likelihood of confusion or false affiliation with the Complainant's trademark. Such registration and use as a result constitutes bad faith. B. Respondent
The Respondent notes that Blue Arc-Advanced IT Solutions is a legally registered company in Turkey and has over time become well-known and respected around Turkey and in other countries as well. The Respondent argues that the Complainant did not register the trademark for BLUEARC in Turkey until July 25, 2007 which was after the registration of on June 10, 2006.
In responding to the Complainant's allegation that the disputed domain names are confusingly similar to the Complainant's trademark, the Respondent notes that their logo is completely different from the Complainant's trademark as evidenced in their Complaint. The Respondent also notes that each Party's respective landing page has a different design, look and feel. Additionally the services and messages being offered are completely different. The services offered by the Respondent include web design, graphic design, computer game development, 3D animation and simulations and other visual effects. The Complainant's services include network storage solutions and computer and hardware sales. The Respondent avers that neither Party offers the services of the other. Therefore in light of the above there is little likelihood of any consumer confusion.
The Respondent notes that never in their history has any party contacted them thinking they were the Complainant. Additionally as the websites are in Turkish, there would be little benefit for any Internet user not fluent in the language. The Respondent argues that these factors in light of the different services being offered clearly evidence that no attempt to profit off the Complainant's BLUEARC trademark is being made.
In closing on this point, the Respondent argues that the phrase “blue arc” is simply a combination of two common English words and is not sufficiently distinct in its own right. The Respondent adds that a number of other companies are using the “blue arc” phrase in their business as well. These factors combined with the fact that the look and feel of the Respondent's landing page is so distinct from the Complainant's landing page clearly evidences that no bad faith attempt to capitalize off the Complainant's BLUEARC trademark is being made.
The Respondent responds to the Complainant's allegation that they have no rights or legitimate interest in the disputed domain names by noting that the domain name of has been in constant use since 2006 when it was registered. The Respondent also contends that if the disputed domain names are transferred it would create additional confusion between consumers who utilize the Respondent's business. The Respondent states that has received awards in Turkey and they have a strong reputation in the country.
In responding to the Complainant's allegations under paragraph 4(a)(iii) of the Policy, the Respondent notes that they never attempted to portray themselves as another company or impact the business of the Complainant. The Respondent argues that there is no bad faith as they have a distinctive look and that the Complainant is not a competitor of theirs as they do not offer web design or animation services. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must establish each of the following with respect to the disputed domain names:
(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.
The complainant must establish these elements regardless of whether the respondent replies to the complaint. Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. A. Identical or Confusingly Similar
Under paragraph 4(a) of the Policy, the Complainant must first evidence that and are identical or confusingly similar to a trademark in which the Complainant has rights. In this case the Complainant alleges that the disputed domain names are confusingly similar to its registered BLUEARC trademark.
In this case the Complainant has provided evidence in the form of a number of Annexes which show a number of trademark registrations for BLUEARC around the world dating back to 2001. The Complainant has also shown that they hold rights to the domain names of , and .
The disputed domain names of and wholly incorporate the Complainant's trademark BLUEARC, notwithstanding the dash. Past cases have held that the incorporation of another party's registered trademark can be sufficient evidence to establish that the domain name is confusingly similar to the complainant's trademark. Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253. The Panel also disregards the addition of the suffixes “.com” and “.net” as irrelevant distinctions that do not alter the likelihood of confusion. VAT Holding AG v. V, WIPO Case No. D2000-0607.
The Respondent makes the point that the look, feel and content of the disputed domain names as well as their logo itself differs significantly from that of the Complainant's landing page and the BLUEARC trademark. While this may be relevant in other facets of the decision, it is a well-established principle that the content of a website and whether it is similar or different from that of a trademark holder is irrelevant in the finding of confusingly similarity. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
The Respondent also argues that the disputed domain names of and are comprised of two generic terms, mainly “blue” and “arc”. In light of the various registered trademarks of the Complainant, it is the Panel's view that the Respondent's argument in this regard is not convincing. The Complainant has proven that he has trademark rights in the combination of words “blue arc”, as evidenced by his various trademark registrations. Also, while the words “blue” and “arc” are generic, the combination of those two words is sufficiently distinctive to acquire trademark status; this is also evidenced by the fact that various trademark registrars have agreed to the registration of the Complainant's trademark.
In this case as a result of the factors above and for the specific purpose of proving that the disputed domain names are confusingly similar to the BLUEARC trademark, the Panel is satisfied that the Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to at first instance make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once that case has been made by the Complainant, the burden of proof shifts to the Respondent who must demonstrate that it has rights or legitimate interests in the domain names. Belupo d.d. v. WACHEM d.o.o,WIPO Case No. D2004-0110. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that the Respondent may use to demonstrate that it possesses rights or legitimate interests in a domain name.
In trying to meet its burden under the Policy, the Complainant has shown that the BLUEARC trademark had been registered and used in its business since 2001. The disputed domain names of and were registered well after the Complainant's initial use and registration of the BLUEARC trademark. The Complainant makes the argument that due to the notoriety and fame associated with the BLUEARC trademark, it would essentially be inconceivable for the Respondent to make a bona fide or a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain.
The Respondent's reply to the Complaint as well as the Panel's assessment of the evidence however does not entirely follow this contention. Here the Complainant has shown that they had rights to the BLUEARC trademark and that they have not provided any license or authorization to the Respondent to use this trademark. While relevant, this factor alone is not conclusive as to whether the Respondent's use of the mark in his business was legitimate. Amscot Corporation v. Fibertech Columns, Inc.,WIPO Case No. D2005-0656.
Following from their assertion of rights to the BLUEARC trademark, the Complainant then describes the services being offered by the Respondent. The Complainant correctly alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain. The Complainant does not address the fact that the Respondent can indeed make a legitimate bona fide commercial use of the disputed domain names which is what the Respondent appears to be claiming. The evidence also indicates that the services being offered by the Respondent are distinct from the services being offered by the Complainant and were additionally being offered prior to the current dispute. In this respect the Panel is not satisfied that the appropriate linkage has been made between the Respondent's use of the disputed domain names and the Complainant's business in order for the Panel to find that the Respondent's use has not been legitimate.
Therefore, while the Complainant has evidenced that they have rights to the BLUEARC trademark, they have not sufficiently evidenced that the Respondent has no legitimate interest to the disputed domain names in light of the evidence put forth by the Respondent and upon the Panel's assessment of the evidence. Accordingly the Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In light of the Panel's finding above, typically a panel is not required to make further determinations under later elements of the Policy. In this case however, a number of the elements leading to the Panel's decision above fit within this section as well and as a whole can provide a more comprehensive explanation of the Panel's decision.
Under paragraph 4(a)(iii) of the Policy, the Complainant is required to show that and have been registered and are being used in bad faith. In addition to the non-exhaustive list of examples under paragraph 4(b), a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant has shown that they do in fact possess rights to the BLUEARC trademark and that the disputed domain names were confusingly similar to the BLUEARC trademark. However with respect to the third element, the Complainant has failed to sufficiently link these rights to a bad faith registration or use. In its Complaint, a key argument by the Complainant is that the services being offered by the Respondent are related to and target the same customer base as the Complainant and that the Respondent is attempting to attract Internet users to its domain pages for commercial gain and in hopes of creating a false association with the Complainant.
After review of the websites at both and in conjunction with the available evidence supplied by the Parties, the Panel is not convinced by these arguments of the Complainant. When compared, in the Panel's view the websites at the disputed domain names and the Complainant's own domain name webpage exhibit remarkable differences in about every major facet. The Panel finds that it is highly unlikely that any consumer or Internet user would be confused or misled between the businesses of the Complainant and the Respondent when viewing the site at the disputed domain names.
Additionally, after review of both services being offered by the Complainant and the Respondent, the Panel finds support in the Respondent's contention that the two Parties offer distinctly different services. The services supplied by the Complainant relate to data storage and design as well as implementation services for a wide variety of industries. Conversely, the services being offered by the Respondent relate more to graphic design, animation and other multimedia services. Therefore the Panel does not find support in the contention that each Party targeted the same customer base. Even if the same sectors were targeted, a different type of service would have been sought by the concerned customers. In the Complainant's cease and desist letter to the Respondent, the Complainant also notes that a large portion of its client base focuses on animation, visual effects and similar products and services of the Respondent. However, this is simply too far removed and too insufficient for demonstrating bad faith.
There is also no evidence that the Respondent is intentionally trying to divert Internet users to its domain pages or to create a false association with the Complainant or its business. The services offered by each respective Party are distinctly different and it would be unlikely that any party seeking to find assistance with its data storage needs would associate the Respondent with the Complainant. This is even more unlikely considering that many of the services of the Complainant are not even offered by the Respondent.
On the basis of the documentation available to the Panel, it seems that the Respondent is offering bona fide services through and without the intention of disturbing or coat-tailing off the Complainant's notoriety and reputation. It appears that the Respondent is conducting a legitimate business.
Accordingly the Panel finds that the Complainant has not met the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Sole Panelist
Dated: March 29, 2010
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