Complainant is DXC Technology Company, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Christian Screen, United States, represented by SNEED PLLC, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. Upon request of Respondent, the due date for Response was extended to November 2, 2019, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on November 2, 2019. On November 8, 2019, the Complainant submitted an unsolicited supplemental filing. In its discretion, the Panel considered the filing, though it added little to the debate. The Center appointed Robert A. Badgley as the sole panelist in this matter on November 18, 2019. 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 According to Complainant, it is “the world’s leading independent, end-to-end IT services company, assisting and leading clients in digital transformations by modernizing and integrating their mainstream IT, and by deploying digital solutions at scale to produce better business outcomes.” Complainant asserts that it has 6,000 clients in 70 countries. (This allegation, as well as the others by Complainant discussed in this section, are supported by documents and screenshots annexed to the Complaint.) Among its leading clients are Airbus, American Airlines, Avon Products, Audi, Bayer, Molson Coors Brewing, Procter & Gamble, Renault, Shell, Tesco PLC, Volkswagen, and Western Union. Complainant was formed in April 2017, as a combination of Computer Sciences Corporation and the Enterprise Services unit of Hewlett Packard Enterprise. Complainant is a Fortune 500 company (ranking 122nd in 2019). Complainant became a publicly traded company on April 3, 2017, and it announced the launch day with an extensive advertising campaign, including print media ads, public relations events, digital marketing campaigns, social media ads, and the like. As for print media, Complainant advertised in The Wall Street Journal, Financial Times, The Australian, The New York Times, and other periodicals. Following Complainant’s launch in April 2017, numerous journals published articles covering Complainant and its business. The articles consistently referred to “DXC Technology.” For example, a May 26, 2017 article in the Washington Business Journal opened as follows: “DXC Technology Co. has been gaining momentum in all the right areas, reporting strong growth Thursday from this services line weeks out from the merger that created the USD25 billion IT giant. The company reported 2017 fiscal year results for Computer Sciences Corp., the predecessor company that merged with Hewlett-Packard Enterprise Co.’s (NYSE: HPE) services division on April 3 to create DXC. The company reported 75 percent growth on the year in its so-called ‘next-generation’ IT services business – which typically refers to some form of digital services involving automation, application development, cloud computing or analytics.” Complainant filed for a trademark for DXC with the United States Patent and Trademark Office (“USPTO”) on July 30, 2017. The USPTO published the mark for opposition on July 30, 2019, and registration remains pending. In addition, Complainant holds registered trademarks for DXC in numerous jurisdictions worldwide. Including Benelux Reg. No. 1009301 (registered April 18, 2017) and European Union Reg. No. 16623514 (registered September 26, 2017). Complainant operates a website at “www.dxc.technology”, and also uses other domain names, such as Complainant asserts that its IT services include artificial intelligence (“AI”) services, According to Complainant, its “DXC Analytics and AI Platform is an analytics solution that rapidly improves the effectiveness and impact of an organization’s existing Business Intelligence landscape.” Complainant alleges that it has “partnerships with over 250 AI technology providers.” The Domain Name was registered on December 16, 2017. At the time the Complaint was filed, the Domain Name did not resolve to an active website. Respondent’s LinkedIn profile indicates that he has been the Global Analytics Practice Director for DatAvail since DatAvail acquired Art of Business Intelligence, a company founded by Respondent, in 2016. Complainant alleges that DatAvail and DXC Technology are competitors “in the field of business solutions.” On April 8, 2019, Complainant’s counsel sent Respondent a cease-and-desist letter. On May 6, 2019, Respondent’s counsel responded to the cease-and-desist letter. Among other things, Respondent’s counsel wrote: “First, the ‘DXC’ term is a generic term used as an acronym for ‘digital cross-connect system,’ which Wikipedia defines as ‘a piece of circuit-switched network equipment, used in telecommunications networks, that allows lower-level TDM bit streams, such as DSO bit streams to be rearranged and interconnected among higher-level TDM signals, such as DS I bit streams.’ Mr. Screen is familiar with this generic term and subject matter due to his data analytics background. Accordingly, the DXC designation should be free for the public to use for their own digital cross-connect system marks, and not exclusively monopolized by a single company.” Respondent’s counsel raised additional points, such as the fact that Complainant did not hold a registered United States trademark and that other business have used the mark DXC in connection with goods or services “outside the digital systems arena.” Absent from this letter was any denial by Respondent that he was aware of Complainant and its DXC offerings. Also missing from this letter was any explanation of why Respondent registered the Domain Name, or what he planned to do with it. On June 13, 2019, Complainant offered USD 2,000 to purchase the Domain Name. On August 22, 2019, Respondent countered with an offer to sell the Domain Name for USD 150,000. Complainant thereafter initiated this proceeding. After the Complaint was filed, the Domain Name began to resolve to an apparently commercial website. Screenshots of Respondent’s website (as of November 1, 2019, and annexed to the Response) reveal a website purporting to offer “auth intelligence” services. The site describes the various “Features of DXC.ai Auth Intelligence” and states: “There’s nothing wrong with being prepared with your security initiatives, meeting regulation requirements such as GDPR, and having confidence in your user information is protected.” Another page of Respondent’s website states: “From your single page sites, mobile apps, PWAs, or portal applications, security is of utmost importance. Control of your application to meet basic end-user security access and to lock down authorizations across multiple systems. Imagine identity intelligence and mobile enabled security management bliss for startups, non-profits, and enterprises alike.” The “Contact Us” page of Respondent’s website states: “Currently Accepting Customers via Invitation Only.” 5. Parties’ Contentions A. Complainant Complainant states that it has proven all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent asserts that the alleged trademark DXC is “generic” for “digital cross-connect system”. Respondent states that he “will be offering a software application directed toward ‘Authentication Intelligence’ (‘AI’) to enable the cross-connection of multiple domains and to broker multiple identity connectors.” “In short,” Respondent contends, he “plans to use the designation ‘DXC.ai’ to suggest its digital cross-connecting authentication intelligence services.” He also asserts that registration of a three-letter domain name is “prima facia [sic] legitimate”. Respondent also argues that several other companies are using the mark DXC, and that Complainant has failed to establish that its purported, unregistered mark DXC has acquired secondary meaning. “In summary”, Respondent states, “Complainant seeks to have the Organization [presumably a reference to the Center] divest [Respondent] Mr. Screen of the DXC.ai trademark that he lawfully acquired”. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark DXC through registration in several jurisdictions outside the United States, and through the use and the acquisition of secondary meaning demonstrated in the record. As was reflected in a 140-page annex to the Complaint, numerous major media outlets have published articles about DXC Technology and its various IT services. Respondent argues that “Complainant’s evidence fails to establish secondary meaning in the DXC term”. That argument is not only belied by the unsolicited and widespread media coverage of Complainant and its DXC offerings in the record (which coverage Respondent does not even address), but the argument also undermines Respondent’s credibility in general. Respondent’s account of his motivations and his post-Complaint website might have been easier to believe if Respondent had not resisted the Complaint on virtually every point, rather than conceding the obvious. The Panel also finds that the Domain Name is identical to Complainant’s trademark. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (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 [Respondent] (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 noncommercial 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. The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. When confronted with Complainant’s cease-and-desist letter, Respondent merely responded by challenging Complainant’s asserted trademark rights. Importantly, Respondent, who has extensive experience in the field of Business Intelligence and computer-related services, did not deny having knowledge of Complainant DXC Technology at the time he registered the Domain Name. Further, Respondent did not state that he had actual plans to use the Domain Name for any particular purpose. These failures, as well as the loss of credibility discussed in the prior section, cast doubt about the legitimacy of Respondent’s newly-minted website, evidently created after the Complaint was filed. Paragraph 4(c)(i), quoted above, requires that Respondent provide demonstrable preparations before notice of the dispute. The Panel also notes that Respondent’s new website purports to offer a wide suite of services, but Respondent is not taking any actual “walk up” customers; rather, Respondent will serve customers upon Respondent’s invitation only. Respondent does not state whether he has a single customer at this time. This fact, when added to the other points raised in this section, persuade the Panel that Respondent’s website is merely a pretext to cloak his registration of the Domain Name with legitimacy. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it more likely than not that Respondent, given his background in IT and the rapid and well-publicized rise of Complainant DXC Technology in the months preceding the Domain Name registration, had Complainant and its DXC mark (albeit unregistered in the United States) in mind when he registered the Domain Name. This finding is bolstered by the fact that the Top-Level Domain here – <.ai> – is often associated with the term “artificial intelligence”, and part of Complainant’s offerings under the DXC mark is in the area of artificial intelligence. The Panel finds bad faith use under, at a minimum, the above-quoted Policy paragraph 4(b)(i). As discussed above, the Panel finds the website now accessible via the Domain Name is probably a pretext and not reflective of Respondent’s intent when he registered the Domain Name. It appears from the record, the arguments made, and the credibility of the Parties (established on part through the various assertions and arguments raised in this case) that Respondent more likely than not registered the Domain Name with a view toward selling it, to Complainant directly or via auction, at a considerable profit. It is true that Respondent did not approach Complainant here, and did not make the first offer, but those facts on their own do not nullify the prospect of bad faith under paragraph 4(b)(i). Plenty of opportunistic domain name owners have registered a domain name identical to a well-known trademark and sat back to wait for an offer. Further, with respect to Respondent’s other arguments – about the inherent value of three-letter domain names and the existence of other businesses using DXC as a trademark – the Panel notes that this proceeding centers on the trademark rights of Complainant (which rights have been established) and the rights and conduct of Respondent. The possibility that Complainant might fail in a UDRP proceeding against some other party who had legitimately been using DXC as a trademark for some good or service, and the fact that there are many legitimate holders of three-letter domain names out there, do not change the fact that, in the Panel’s view, Respondent targeted Complainant and its DXC trademark in bad faith. The Panel need not consider finding bad faith under paragraph 4(b)(iii). The Panel notes, however, that nowhere in the Response is there any denial of Complainant’s contention that Complainant and Respondent’s company, DatAvail, are competitors. The Panel also does not have to address Complainant’s “passive holding” argument under the tenets of Telstra Corp. Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, though it appears to have some merit under the circumstances here. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
Sole Panelist
Date: December 2, 2019
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