The Complainant is RStudio, Inc. of Boston, Massachusetts, United States of America (“United States”), internally represented.
The Respondent is Contact Privacy Inc. Customer 0143179764 of Toronto, Canada / Ragone Falegnameria sas Societa/Ditta of Vimodrone, Italy. 2. The Domain Name and Registrar
The disputed domain name, , is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 11, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 23, 2016. 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 RStudio, Inc., a company incorporated in Boston, Massachusetts, United States. The Complainant offers a set of integrated tools designed to help computer users to be more productive with R (R is an open-source statistical language). RStudio offers open-source and enterprise-ready tools for the R computing environment. The Complainant’s flagship product is an Integrated Development Environment (“IDE”) used to analyze data with R. The Complainant also offers many R packages, including a platform for sharing interactive applications and reproducible reports with others.
The mark RSTUDIO was registered by the Complainant in the United States, New Zealand, and Canada. The Complainant has also an international registration covering Australia, European Community, China, Japan, Norway and Switzerland. The registrations cover classes 9, 41 and 42 including application service provider (“ASP”). In the United States, the marks were filed on March 16, 2009 and registered on September 10, 2013.
The disputed domain name was registered on June 6, 2016. The disputed domain name is not in use. 5. Parties’ Contentions A. Complainant
The Complainant states that the use of the RSTUDIO mark in the disputed domain name is unauthorized and will create confusion as to its source.
The Complainant states that RStudio, Inc. already offers cloud hosted products for use with the RStudio-integrated development environment, known as “RStudio”. The Complainant states that this free and open source software is used by millions of users on their PCs and servers. The Complainant adds that RStudio will be offering this software as a commercial cloud hosted service within the next twelve months.
The Complainant states that their mark is the primary protection from those who would use the Complainant’s free and open source software in their commercial products and services without payment.
The Complainant states that the Respondent does not have rights to the disputed domain name because RStudio is the exclusive owner of the mark.
The Complainant states that the disputed domain name was registered and is being used in bad faith. According to the Complaint, RStudio’s popularity with data analysts and statisticians has created an incentive for companies acting in bad faith to exploit the Complainant´s trademarks in order to sell products and services, sometimes including the use of the Complainant’s free and open source software in violation of its trademark rights.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of evidence submitted by the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the mark RSTUDIO by virtue of its use and registration of this mark in several jurisdictions, as mentioned above.
The Panel believes that the disputed domain name, , is identical to the RSTUDIO mark. The main portion of the disputed domain name, “rstudio”, contains exactly the same letters, in the same order, as the RSTUDIO mark.
The addition of the generic Top-Level Domain (“gTLD”), “.cloud”, offers no distinction. Moreover, as placement in the “cloud” is now recognized as a storage method for computer-generated materials, that term would have an implied connection with any domain name prefix to which it might be attached as a gTLD. See, Philip Morris USA Inc. v. Dusan Vanek,WIPO Case No. D2016-0908 (finding to be identical to the MARLBORO mark); and COMUTO v. Este sas di S. Terracina & C. Societa/Ditta,WIPO Case No. D2016-0758 (which found to be virtually identical to the mark BLABLACAR).
Accordingly, the Panel finds that the Complainant has succeeded in establishing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights 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 disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this proceeding, it is undisputed that the Complainant did not give permission to use its RSTUDIO mark in the disputed domain name.
Nothing in the record of this proceeding, including screen shots of the websites associated with the disputed domain name, indicates that the Respondent was known by a corresponding name or used the disputed domain name in connection with a bona fide offering of goods or services. In fact, the disputed domain name has no use. It only contains a message stating: “www. sito in costruzione hosting su piattaforma Apache” (in English: “www. site under construction hosting in Apache platform”).
The Respondent has not rebutted the Complainant’s prima facie case on this point, and the Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith
The Panel finds, in light of the prior registration and use of the Complainant’s trademark RSTUDIO in several jurisdictions and the intensive use on the Internet, that the Respondent could not ignore the existence of the trademark at the time of the registration of the disputed domain name, with which it is identical.
Indeed, the very selection of the disputed domain name combining the mark RSTUDIO with the term “cloud”, which is descriptive of part of the services provided by the Complainant, suggests that the Respondent was likely aware of the Complainant’s mark and of the possible likelihood of confusion or association of the disputed domain name with the Complainant and its trademark.
As to the use of the disputed domain name, the Panel notes that the Respondent has redirected it to an “under construction” page and has failed to demonstrate any preparation to use the disputed domain name in connection with a legitimate purpose. Currently, the disputed domain name is not active. It only contains a message stating: “www. sito in costruzione hosting su piattaforma Apache” (in English: “www. site under construction hosting in Apache platform”).
Moreover, and in accordance with the evidence provided by the Complainant in the present proceeding, the Panel does not envisage any use of the disputed domain name, identical to the Complainant’s mark, that would not be illegitimate, as Internet users could likely believe that the disputed domain name and corresponding website are operated by, or affiliated with, the Complainant. As stated, amongst others, in Missoni S.p.A. v. William Song,WIPO Case No. D2012-0208, where the domain name at issue resolved to a landing page, “the passive holding of a domain name which has no other legitimate use and clearly references the Complainant’s trademark may constitute registration and use in bad faith”. See also the leading case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In light of the above, the Panel concludes 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.
Pablo A. Palazzi
Sole Panelist
Date: September 6, 2016
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