WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Decho Corporation v. Backupsonline Case No. DNL2009-0058 1. The Parties
The Complainant is Decho Corporation of Pleasant Grove, Utah, United States of America, represented by Melbourne IT Digital Brand Service, United States of America.
The Respondent is Backupsonline of Leiden, the Netherlands. 2. The Domain Name
The disputed domain name (the “Domain Name”) is registered with SIDN. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2009 by e-mail and on November 18, 2009 in hard copy. On November 2, 2009, the Center transmitted by email to SIDN a request for registry verification in connection with the Domain Name. On November 3, 2009, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with articles 5.1 and 16.5 of the Regulations the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2009. In accordance with article 7.1 of the Regulations the due date for Response was December 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 11, 2009.
After having received the payment of the fees, the Center appointed Alfred Meijboom as the panelist in this matter on December 23, 2009. The Panelist finds that he was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with article 9.2 of the Regulations. 4. Factual Background
The Complainant offers online computer backup services to consumers and businesses internationally and is holder of different MOZY trademarks, including Community trademark No. 6067615 MOZY for, inter alia, computer software for storing electronic data, including backing up and archiving electronic data, which trademark was registered on July 24, 2008, and enjoys priority of June 11, 2007 based on a United States trademark MOZY.
The Domain Name was registered on July 10, 2006. The Domain Name leads to a website promoting a remote computer backup service. 5. Parties' Contentions A. Complainant
The Complainant was established in November 2008 and is a combination of two formerly separate EMC-owned companies doing business since 2005. The Complainant has continued to offer consumers and businesses online backup service. The Complainant began to achieve great success in 2006 and 2007 and its website has averaged over 235,000 unique visitors per month in 2009, including more than 310,000 unique visitors in September 2009.
The Complainant filed applications in the United States, Europe and other jurisdictions to register the trademark MOZY in July 2007, including the aforementioned Community trademark No. 6067615 MOZY which is valid in the Netherlands. The Complainant asserts that the Domain Name is identical to the trademark MOZY. The addition of the top level domain “.nl” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity/identity of the trademark.
These facts serve to establish that the Domain Name is identical to the Complainant's former company name and the name under which it currently sells its services. MOZY is also the subject of many trademark registrations and applications owned by the Complainant throughout the world. Further, the Domain Name is confusingly similar to the Complainant's main website , as well as its many other domain names. The Respondent has registered the Domain Name, which is identical to the trademark owned by the Complainant.
Further, the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using MOZY in any other way that would give it any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage. It is also clear, that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark MOZY. It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name MOZY at the time of registration of the Domain Name. Considering the fact that the Respondent has pointed the Domain Name to the website of one of the Complainant's competitors (the company Backupsonline, which offers the same services as the Complainant does), makes it rather obvious that it is the fame of the Complainant's trademark that has motivated the Respondent to register the Domain Name. That is, the Respondent cannot claim to have been using MOZY, without being aware of the Complainant's rights to it. This, among other facts, proves that the Respondent's interests could have not been legitimate. The Domain Name resolves to a commercial website. The Respondent cannot be said to be making legitimate non-commercial or fair use of the Domain Name without the intention of commercial gain, but is misleadingly diverting consumers and tarnishing the trademark at issue for its own commercial gain as it sells the same services for which the trademark MOZY is protected.
The Complainant therefore maintains that the Respondent has no rights, or legitimate interest with respect to the Domain Name.
The Complainant contacted the Respondent with a proposal to acquire the Domain Name, but the Respondent, demonstrating full knowledge of the reputation of services under the MOZY mark, stated “Yesterday we had a board meeting; we are not very fond of selling the domain, currently it generates leads for our website. After a long conversation we agreed on selling it, but our price is a lot higher: $ 25.000”. In its emails, the Respondent clearly indicated that it would sell the Domain Name to the Complainant, which undoubtedly indicates the lack of interest of the Respondent in the Domain Name apart from selling it to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. The fact that the Respondent waited until someone approached it regarding the Domain Name and did not actively pursue the sale of the Domain Name is not relevant as in the meantime the Respondent used the Domain Name to knowingly offer services competitive with the services offered by the Complainant.
According to the Complainant the Domain Name was thus registered by the Respondent with the sole intention of disrupting the Complainant's business by sending potential customers of the Complainant to a company that offers the same services as the Complainant and is a competitor of the Complainant. The current intention of the Respondent is to sell the Domain Name to the Complainant for an inflated amount, especially in light of the fact that the MOZY brand is gaining ground in the Dutch market, thereby infringing the Complainant's intellectual property rights. The ongoing, and the continued disruption by the Respondent of the Complainant's business relationships clearly establishes the Respondent's bad faith both in the registration and the use of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Language of the Proceedings
The Complainant is residing nor registered in the Netherlands, for which reasons English is the language of proceedings pursuant to article 17.2 of the Regulations. Grounds of the Complaint
Article 10.3 of the Regulations provides that, in the event that a respondent fails to submit a response, the Complaint shall be granted, unless the Panelist considers it to be without basis in law or fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes each of the following:
a) that the Domain Name is identical or confusingly similar to:
I a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie') of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b) that the Respondent has no rights to or legitimate interests in the Domain Name; and
c) that the Domain Name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds a Community word mark MOZY. Therefore, the Panelist finds that the Complainant has rights in the MOZY trademark protected under Dutch law.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the MOZY trademark in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name (e.g. Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
As the Domain Name is therefore identical to the MOZY trademark of the Complainant, the Panelist is satisfied that the first requirement of article 2.1 of the Regulations is met. B. Rights or Legitimate Interests
According to article 2.1 sub b of the Regulations, the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by for example providing evidence of one of the three circumstances mentioned in article 3.1 of the Regulations (e.g. Technische Unie B.V. en Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002 and LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052).
The Complainant has contended that it has not licensed or otherwise authorized the Respondent to use its MOZY trademark and the Respondent did not dispute the Complainant's claim to that effect, nor could the Panelist establish any indication that the Respondent, (article 3.1 sub a) before having any notice of the dispute, made 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, (article 3.1 sub b) is commonly known by the Domain Name, or (article 3.1 sub c) is making a legitimate noncommercial use of the Domain Name.
For these reasons, the Panelist finds that the Complainant has satisfied article 2.1 sub b of the Regulations. C. Registration and/or Use in Bad Faith
Article 2.1 sub c of the Regulations requires the Complainant to demonstrate that the Domain Name has been registered or is being used in bad faith.
The Complainant showed that the Respondent (a) uses the Domain Name for commercial gain, by attracting Internet users to the website of the Respondent for commercial services in direct competition with those offered by the Complainant under the MOZY trademark, (b) only offered to transfer the Domain Name to the Complainant for valuable consideration in excess of the cost of registration of the Domain Name, and (c) was very likely aware of the Complainant's use of the mark MOZY for backup services when the Respondent registered the Domain Name as demonstrated by the fact that Respondent offers similar but competing services. For these reasons the Panelist concludes that it is obvious that the Domain Name was both registered and used in bad faith.
Therefore, the Complainant also satisfied the third condition of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Dated: December 30, 2009
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