WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Infovista SA v. Infovista Technology LLC/Samir Rahman

Case No. D2003-0913

 

1. The Parties

The Complainant is Infovista SA, Les Ulis, France, represented by Pontet Allano & Associes Selarl, France.

The Respondent is Infovista Technology LLC/Samir Rahman, Sunnyvale, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <infovistausa.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 14, 2003. On November 18, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 18, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 November 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 29, 2003.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 8, 2004. 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 proceeding, Infovista SA, is a company incorporated under the laws of France. The Complainant owns a fully controlled subsidiary in the USA named InfoVista Corporation.

The Complainant has based its Complaint on the trademark INFOVISTA, registered in the USA on December 16, 1997. The registration number is 2 120 954 and priority was claimed based on the French application number 95/599974 that was filed July 12, 1995. The Complainant has provided a copy of the registration certificate.

Furthermore, the Complainant has based its Complaint on the Community Trademark INFOVISTA, filed May 31, 1996, and registered September 27, 2000. The registration number is 000274043. The Complainant has provided a copy of the registration certificate.

The Respondent registered the domain name <infovistausa.com> on August 2, 2000. The Complainant has provided a copy of the relevant Whois search result, which has been confirmed by the concerned Registrar.

 

5. Partiesí Contentions

A. Complainant

The Complainant designs, develops and markets technologically advanced software which monitors, analyses and reports on the performance and quality of service on information technology infrastructure, including networks, servers and applications. Its products are part of the software market segment known as Service Level Management. It markets its products to telecommunication companies, Internet service providers and other IT intensive organizations, such as financial services companies, outsourcers of IT services application service providers and other multinationals. Infovista SA is quoted on the French "New Market" and US "Nasdaq."

Recently the Complainant learned about the existence of the website connected to the domain name <infovistausa.com> in which an "Infovista Technology LLC" company was introduced.

The Complainant owns the corporate and trade name INFOVISTA in Europe (France) where it is registered since 1996. The Complainant also owns a fully controlled registered subsidiary in the USA named Infovista Corporation.

The Complainant claims to be the owner of many trademark registrations throughout the world, including the USA. The Complainant is the holder of the domain name <infovista.com>.

The Complainant argues that the disputed domain name <infovistausa.com> is confusingly similar to the domain name <infovista.com> due to the fact that the disputed domain name includes a "reproduction of the Infovista denomination." The Complainant also argues that the disputed domain name <infovistausa.com> can be red as "infovista usa" because the USA is the main market for data processing industries involved in the IT field.

The Respondent has no rights to the corporate name or trademark INFOVISTA, which are the exclusive property of the Complainant, who duly registered its trademark for software and technical consulting services in the field of computer software and hardware in the USA and Europe among others since 1997.

It is the opinion of the Complainant that a simple clearance search, availability search or interrogation when applying for the disputed domain name would have revealed the existing domain name <infovista.com> registered by the Complainant. The Respondent could not have ignored the prior domain name registered by the Complainant. Applying for an identical denomination where the "usa" letters are added constitutes infringement upon the prior name, trademark and domain name. The addition of the "usa" letters must be seen as a name-catching maneuver, indicating that the registration of the disputed domain name was done in bad faith.

When visiting the Respondentís website, to which the disputed domain name is directed, and clicking on "Business Wire" on the front page, there is a press release concerning the Complainant Infovista SA, thus creating confusion. It is an attempt to interest and catch common potential purchasers and clients, and it is at least disrupting the business of a potential competitor. A simple review of the contacts and clients shows that they are multinationals and telecommunication companies, i.e. the same potential clients.

By using the domain name, the Respondent attempts to attract for commercial purposes and gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source or affiliation or of a service on the Respondent's website.

The Complainant has attempted to send warning letters and cease and desist letters to the address found in the Whois database and to other possible addresses but all attempts have failed as the correspondence has been returned with the mention "moved."

The D&B database indicates that attempts to contact Infovista Technology LLC in Sunnyvale, California, were unsuccessful. No address can be found on the website connected to the disputed domain name <infovistausa.com>, thus evidencing a "moving" company. According to the Complainant, the website has been inactive until recently; it seems now active, but as yet no address is mentioned. The phone number indicated is directed to an answering machine. The Complainant has been unable to locate the company. After numerous attempts, the Complainant managed to obtain a new address, which has been communicated to the Center.

It is the opinion of the Complainant that the disputed domain name has been registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainantís contentions. In accordance with paragraph 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted copies of the relevant Registration Certificates, the owner of the trademark INFOVISTA in the USA and the European Community. The disputed domain name <infovistausa.com> incorporates the trademark in its entirety but has a suffix consisting of the letters "usa" which is generally understood as an abbreviation for the United States of America. The ability for such a generic word to distinguish the domain name from the trademark is limited and has little, if any, legal significance according to previous case law. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun "girls" was not sufficient to distinguish the domain name from the trademark NOKIA. Other cases suggesting that a combination of a trademark with a geographical name does not exclude confusing similarity are for example Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 and Inter-IKEA v. Polanski, WIPO Case No. D2000-1614.

Having the above in mind, it is the opinion of the Panel that the domain name <infovistausa.com> is confusingly similar to the Complainantís trademark INFOVISTA.

B. Rights or Legitimate Interests

The Complainant claims that the Respondent has no rights to the corporate name and trademark INFOVISTA. The Complainant alleges that the above-mentioned corporate name and mark are exclusive property of the Complainant.

In accordance with the terms of paragraph 4(a) of the Policy, the overall burden of proof is on the Complainant. However, the introductory paragraph to paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. The paragraph goes on to set out a non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the Panel, will establish the relevant rights and/or legitimate interests of the Respondent.

The two sub paragraphs of paragraph 4(c) of the Policy which could be relevant in this situation are sub paragraphs (i) and (ii) which read as follows:

"(i) before any notice to you 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 (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights."

The Complainant has submitted a single-page printout (Annex 3) from the Respondentís website that contains the Respondentís e-mail, telephone and fax numbers in the United States, India and Dubai. From the evidence submitted, it seems clear that the Respondent has a website connected to the disputed domain name.

The Complainant argues that the website has been inactive until recently but has not submitted any evidence as to when the Respondent created the website connected with the disputed domain name or any records indicating how long the website has been active and/or inactive. From the evidence submitted by the Complainant, it is not possible to say whether the website has been active since the registration of the domain name or not.

According to the submitted Business Information Report by D&B dated June 24, 2003 (Annex 3 to the Complaint), a Limited Liability Company registration with the name "Infovista Technology LLC" was issued on June 7, 2000, listing Samir Rahman as one of the two managing members. However, further investigations by D&H indicated that there was "no record of the required business license being issued."

The Panel notes that the Respondent actually registered a Limited Liability Company with the name "Infovista Technology LLC" before registering the domain name <infovistausa.com>.

However, it should be noted that the actual registration of the above-mentioned Limited Liability Company itself may be infringing the Complainantís trademark INFOVISTA but whether or not that is the case, it cannot and should not be decided under the Policy. This forum is not a convenient forum for resolving borderline disputes because the Policy is only designed to deal with clear cases of cybersquatting.

Although the Respondent has not contested the allegations made by the Complainant and has not provided any evidence indicating any rights or legitimate interests to the domain name <infovistausa.com>, the Panel is not impressed by the Complaint under this second part of the test. However, due to the fact that bad faith has not been proven (see below), it is not necessary for the Panel to conclude under this second element of the Policy.

C. Registered and Used in Bad Faith

According to the Complainant, the Respondent should have noticed the already existing domain name <infovista.com>, belonging to the Complainant, when applying for the domain name <infovistausa.com>. In addition to this, the Complainant argues that the addition of the letters "usa" is evidence of a registration made in bad faith.

Normally, when registering a domain name, one selects the desired domain name and receives an immediate search result indicating whether the desired domain name is available or not. If one where to apply for the domain name <infovista.com>, one would receive a result stating that the domain name is unavailable and registered by another party but if one where to apply for a domain name that is available, one would not automatically receive a notice saying that the domain name <infovista.com> is registered by another party, even if the domain names are similar.

However, it is plausible, as argued by the Complainant, that the Respondent could have been aware of the Complainantís domain name when registering the disputed domain name, but, inter alia, since the Respondent registered a domain name that is similar to the already registered Limited Liability Company belonging to the Respondent, it is difficult to conclude that the registration was made in bad faith.

The Complainant claims that when clicking on a button called "Business Wire" on the Respondentís website, one will find a press release concerning the Complainant, which creates confusion. The Complainant argues that this behavior is an attempt to create interest among common potential purchasers and clients and/or disrupt the business of a potential competitor as the Respondent allegedly has the same potential clients as the Complainant. According to the Complainant, the usage of the disputed domain name is an attempt to attract for commercial purposes and gain, Internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís mark as to the source or affiliation or of a service on the Respondentís website.

Although it has been claimed by the Complainant, that the Respondent has posted a press release concerning the Complainant on the website connected with the disputed domain name, the Complainant has not submitted any kind of evidence, such as dated printouts from the website or source code, to prove this allegation. The Panel subscribes to the opinion, that if such evidence had been submitted, it may have been an indication of bad faith as described in paragraph 4(b)(iii) and 4(b)(iv) of the Policy. However, without any such evidence or any other compelling evidence in the case file, this Panel cannot conclude that the disputed domain name was registered and used in bad faith.

 

7. Decision

On the basis of the foregoing, the Panel concludes that the Complainant has failed to prove that the Respondent registered and used the domain name in bad faith.

Therefore, pursuant to paragraph 4 of the Policy and paragraph 15 of the Rules, the Panel denies the Complainantís request to transfer the disputed domain name to the Complainant.

 


 

Johan Sjöbeck
Sole Panelist

Dated: January 21, 2004