The Complainant is Netgear Inc. of San Jose, California, United States of America, represented by Lee Tran & Liang LLP, United States of America.
The Respondent is Sanjeev Pirta of Panchkula, Haryana, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, the Registrar 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2015.
The Center appointed Antony Gold as the sole panelist in this matter on October 27, 2015. 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 company located in San Jose, California in the United States of America. It is a leading manufacturer and seller of network hardware, such as routers, adaptors and servers, as well as network software, both in the United States of America and worldwide. The Complainant offers its products for sale through online retail websites, retail stores and its own websites. In 2014 the Complainant’s revenue was USD 1.3 billion and it spent USD 157 million on sales and marketing.
The Complainant owns US trademark number 2124219 for NETGEAR in International Class 9, registered on December 23, 1997, US trademark number 3439646 for READYNAS in International Class 9, registered on June 3, 2008 and US trade mark number 4664192 for READYCLOUD in International Class 9, registered on December 30, 2014 (“the Complainant’s trademarks”).
The Respondent registered the disputed domain name on March 23, 2015. As at June 2015 the disputed domain name resolved to a website that purported to offer for sale a variety of computer networking hardware made by the Complainant. The home page of the website contained a disclaimer that the owner was an independent service provider for third party brands but the remainder of the website was focused exclusively on the Complainant’s products. The overall impression created by the Respondent’s website was that it was either owned and/or operated, or alternatively authorized, by the Complainant in that (by way of example only) the website featured images and descriptions of equipment offered for sale by the Complainant, made frequent use of the Complainant’s trademarks and featured links to some of the Complainant’s online materials.
On June 25, 2015 the Complainant’s legal representatives wrote to the Respondent requesting that he cease using the Complainant’s trademarks and that he transfer the disputed domain name to the Complainant. The Respondent replied by email dated June 25, 2015 stating that he could not transfer the disputed domain name as he had paid “a good amount” to purchase it.
There ensued further exchanges of correspondence between the legal representatives for the Complainant and the Respondent. The Respondent offered to sell the disputed domain name to the Complainant but did not initially provide any indication as to the price he would accept for it. Following the Complainant’s request for proof of the price the Respondent had paid for the disputed domain name the Respondent removed all the website content and replaced it with a notice listing the disputed domain name for sale with a minimum bid of USD 5,000. 5. Parties’ Contentions A. Complainant
The Complainant says that the evidence it has produced of its READYCLOUD, READYNAS and NETGEAR trademarks provides evidence of its rights in these marks. It says also that it has used NETGEAR in connection with the sale of computer interconnection network hardware since at least 1996, that its READYNAS trademark has been used in connection with the sale of computer hardware and software since at least April 2005 and that its READYCLOUD trademark has been used in connection with the sale of software since at least March 2013.
The Complainant points out that previous panel decisions have found that the generic Top-Level Domain (“gTLD”).””com” suffix should be disregarded for the purposes of assessing similarity or identicality. Having regard to this practice, the Complainant asserts that the disputed domain name is identical to its NETGEAR and READYCLOUD trade marks in that the disputed domain name is comprised solely of a combination of these marks.
Additionally or alternatively, the Complainant says that the disputed domain name is confusingly similar to its READYCLOUD and NETGEAR trademarks. It points to the very similar goods and services which were purportedly offered for sale by the Respondent whilst his website was active and the extensive use which the Respondent made on his website of the Complainant’s trademarks and copyright images.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that once it has made out a prima facie case that the Respondent lacks legitimate interests, the burden shifts to the Respondent to prove otherwise. It refers in this respect to the decision of the panel in Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Complainant explains that there are no indications that the Respondent might have a legitimate interest in respect of the disputed domain name. First, it says that the Respondent’s infringing use of the Complainant’s trade marks in order to sell competitive goods and services cannot under any circumstances be considered a bona fide offering of goods and services, for the reasons set out by the panel in Lockheed Martin Corporation v. NBPro Hosting,WIPO Case No. D2003-0859. Second, the Complainant says that the Respondent is not commonly known as “readycloudnetgear” and that he has no other apparent connection or link to the disputed domain name nor any authorization or licence from the Complainant to register or use any domain name incorporating its trade marks. Third, the Complainant says that the Respondent’s use of the disputed domain name is neither fair nor noncommercial in character.
Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. In this respect, the Complainant says that the disputed domain name was acquired by the Respondent for the purpose of selling or transferring it to the Complainant for valuable consideration in excess of his out-of-pocket costs and that this establishes bad faith registration under paragraph 4(b)(i) of the Policy. In support of this contention, the Complainant points to the Respondent’s offer to sell the disputed domain name at a minimum bid of USD 5,000.
Moreover, the Complainant asserts that, by its use of the disputed domain the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name pointed by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of his website and that this is evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy. In support of this contention, the Complainant points to the fact that not only does the disputed domain name comprise the Complainant’s trademarks but that the website to which the disputed domain name pointed offered goods and services identical in nature to those offered for sale by the Complainant. Moreover, the use in the website content of the Complainant’s trademarks and copyright images coupled with a similar “look and feel” to the Complainant’s website is, the Complainant says, calculated to reinforce confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the details of the Complainant’s trade mark registrations for READYCLOUD, NETGEAR and READYNAS, coupled with its assertions of continuing use in commerce of these marks establishes that the Complainant has rights in each trade mark.
When assessing similarity or identicality it is well established, that the generic Top-Level Domain (“gTLD”) “.com” suffix of the disputed domain name may be disregarded. The disputed domain name is comprised solely of two conjoined words, “readycloud” and “netgear”, each of which corresponds exactly to a registered trade mark of the Complainant. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to trade marks in which the Complainant has rights. As the disputed domain name comprises a composite of two of the Complainant’s marks, the disputed domain name actually reinforces a seeming association with the Complainant. For this reason, the disputed domain name is also confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which would enable a respondent to demonstrate its rights or legitimate interests in a disputed domain name. As the Complainant has contended, none of these circumstances appear to be of any application to the Respondent.
First, there is nothing to suggest that, prior to the approach made by the Complainant’s lawyers to the Respondent in June 2015, the Respondent had used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The use of the disputed domain name to point to a website using the Complainant’s trademarks and copyright photographs coupled with a similar “look and feel” to the Complainant’s website, purportedly to offer similar goods for sale, does not amount to a bona fide offering of goods and services. Second, there is no evidence that the Respondent has ever been known by the name “readycloudnetgear” or any similar name. Third, the Respondent has not been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue. As the panel said in Lockheed Martin Corporation v. NBProHosting,WIPO Case No. D2003-0859; “it cannot be fair use where there is no legitimate connection between the Respondent and its use of the domain name in dispute, and the Complainant and its trademarks”. The website to which the disputed domain name pointed was commercial in character and its content was evidently intended to mislead Internet users into thinking that it was either owned and/or operated or at least authorized by the Complainant.
The Respondent subsequently removed all the website content and replaced it with a notice listing the disputed domain name for sale with a minimum bid of USD 5,000.
Accordingly, there is no evidence before the Panel which suggests that the Respondent could bring himself within any of the specific circumstances set out at paragraph 4(c) of the Policy or any similar circumstances. Moreover, the Panel accepts the Complainant’s submission that, once it has made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to prove otherwise (see, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Complainant has made out a prima facie case and, in the absence of any evidence or response from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which if found by a panel to be present shall be evidence of the registration and use of a domain name in bad faith. The first of these circumstances arises if the panel finds that a respondent has registered or acquired the domain name in issue primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
The Complainant has provided copies of the correspondence between its legal representative and the Respondent. This evidences an apparent readiness on the part of the Respondent to transfer the disputed domain name to the Complainant. Although the Respondent stated at an early point in the correspondence that “whatever amount Netgear deems fit for the domain I will take that in consideration” and subsequently asked for “a good amount”, the only specific sum sought by the Respondent was the “Minimum Bid: $5,000 (US)” which was posted on the website to which the disputed domain name pointed once the content about which the Complainant had complained had been removed. Such a sum will plainly have been in excess of the Respondent’s documented out-of-pocket costs.
The contents of the Respondent’s website strongly suggest that it was not established as a bona fide website but rather as “bait” which contained content calculated to encourage the Complainant to purchase the disputed domain name. This view is reinforced by the fact that at no point in the correspondence between the Complainant’s legal representative and the Respondent did the Respondent ever suggest that the website to which the disputed domain name pointed was being used by him for the purpose of a genuine business. Accordingly, the Panel finds that the Respondent registered or acquired the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
Moreover, the form and content of the Respondent’s website was plainly intended to confuse Internet users as to its apparent connection with the Complainant. Such an intention falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that by using the disputed domain name the Respondent intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of his website or products or services offered for sale on it.
Accordingly the Panel finds the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: November 11, 2015
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