WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Symark International, Inc. v. Gary McCurty

Case No. D2005-0235

 

1. The Parties

The Complainant is Symark International, Inc., Agoura Hills, California, United States of America, represented by William A. Finklestein, Esq., of the law firm Alschuler Grossman Stein & Kahan, United States of America.

The Respondent is Gary McCurty, Mannsville, Kentucky, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <symarksoftware.com> is registered with TLDS L.L.C., a Delaware corporation, a/k/a TLDs, Inc., d/b/a SRSplus a wholly owned subsidiary of Network Solutions, LLC (“SRSplus”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2005. On March 4, 2005, the Center transmitted by e-mail to SRSplus a request for registrar verification in connection with the domain name at issue. On March 8, 2005, SRSplus transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact.

On March 11, 2005, the Center sent Complainant a Complaint Deficiency Notification (“Notification”) via e-mail with a copy to the Respondent. As a result of a miscommunication, on April 4, 2005, the law firm representing Complainant confirmed via telephone conversation with the Center that the attorney handling this matter could not verify that he had received the Notification. Therefore, that same day, the Center sent an additional copy of the Notification to Complainant’s counsel via e-mail with copies to all appropriate parties. In light of Complainant’s representation, the Center also extended the deadline for filing an Amendment to the Complaint pro hac vice until April 9, 2005.1 The next day, April 5, 2005, Complainant sent its revised Complaint and an Amendment to cure the noted deficiencies. A hard copy of these documents was received by the Center on April 7, 2005. The Center then verified that the Amendment to 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 Amendment to the Complaint by all the prescribed methods and to all the appropriate entities, and the proceedings commenced on April 8, 2005.2

In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default via e-mail on May 2, 2005.3

The Center appointed Craig Edward Stein as the sole panelist in this matter on June 1, 2005. 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 full record in this matter, which includes the Complaint and attached exhibits, as well as the other documents contained in the case file, establish the following facts:

A. The Complainant

The Complainant in this administrative proceeding is Symark International, Inc. (“Symark”) which is in the business of developing, marketing and licensing its proprietary security software for computer operating systems. Complainant’s computer software products, include its POWERBROKER and POWERPASSWORD programs. These programs allow system administrators to control a computer user’s access to sensitive information on company-owned computer servers. Complainant licenses its information security software products to customers in dozens of countries and, as a result, its software protects several hundred thousand UNIX and Linux computer servers around the world. Complainant’s clients include a variety of companies, including those in the pharmaceutical and defense industries. Recently, the United States Internal Revenue Service (“IRS”) announced that it would be licensing one of Complainant’s products to protect the confidentiality of information pertaining to American taxpayers.

In furtherance of its business strategy, Complainant has registered and owns United States Trademark Registration No. 2779365 for SYMARK, International Class 9 – Electrical and Scientific Apparatus, Goods/Services, Computer Software Programs to assist in systems administration and security on a computer operating system; U.S. Classes 21, 23, 26, 36 and 38. Complainant filed for this trademark with the United States Patent and Trademark Office on December 6, 2002, and the trademark was registered on November 4, 2003. However, since its inception in 1985, Complainant has continually used both the unregistered mark SYMARK SOFTWARE, and the now registered trademark, SYMARK, in connection with the development and licensing of its computer software programs.

Similarly, Complainant has registered the domain name <symark.com>.4 The Complainant’s domain name resolves to its official website which displays information about the Complainant and its computer software products. The website also contains numerous references to its registered mark, SYMARK, and the unregistered term SYMARK SOFTWARE. Complainant’s website attracts more than 8,000 visitors per month.

B. The Respondent

There is no record evidence concerning the business activities of Respondent, Gary McCurty (“McCurty”). What scant information the case file does reveal is detailed above in Section 3, Procedural History. Thus, it is known that neither the e-mail address nor mailing address provided by the Respondent to the Registrar is accurate. Indeed, whether Mr. McCurty is even the Registrant’s true identity is uncertain. Nonetheless, according to the Registrar, McCurty registered the disputed domain name <symarksoftware.com> on October 1, 2004.

C. The website to which the disputed domain name resolves

When the disputed domain name <symarksoftware.com> is entered into a web browser, the user is directed to a website that displays a page which purports to be that of the Complainant. The first page of Respondent’s website displays a verbatim description of Complainant’s software products that the Complainant itself employs on its own website. Moreover, some of the text that has been lifted from Complainant’s website is clearly marked with the “©” copyright symbol.

In addition, Respondent’s web page also contains a list of links in the upper left hand corner. This list includes the following topics:

Index

Unix Administration

Unix Access Control

Root Delegation

Passwords User Logins

Password Security Policy

Password Policy

Password Management

Network Security Software

Network Security Policy

Network Security Password

Network Security Attacks

Login Security

Linux Authorization

Linux Authentication

Internet Security Software

Data Security Software

Computer Security Software

Computer Network Security

Unix Authorization

User Authentication Server

If a user clicks on these various links, the webpage resolves to another page that appears almost identical to the one that immediately preceded it, except that the copyrighted text taken from Complainant’s official website changes to match the topic to which the user has selected.5 To the immediate right of these links and covering the top half of the Respondent’s webpage is a large banner with the instruction stating “Click to Enter”. In its Complaint, Symark represented that “if a user actually clicks on this instruction, the user is then directed to Complainant’s actual webpage”. However, at the time the Panel reviewed the Respondent’s website, the banner no longer resolved to the Complainant’s official website, but rather to a page entitled <freebannertrade.com>.6

Finally, on each page of the website to which the disputed domain name resolves, including those pages that are displayed when one of the “topics” listed above is clicked on, four “boxes” are displayed that contain a series of “Sponsor Ads”. Each of these Sponsor Ads includes a hyperlink that allegedly directs the user to the webpage of the sponsoring advertiser. These advertisements offer products that are unrelated to the Complainant’s business, such as satellite dishes, used motor home parts and even “church equipment”.

 

5. Parties’ Contentions

A. Complainant

1. The domain name <symarksoftware.com> is identical or confusingly similar to Complainant’s SYMARK registered trademark and to its common law rights in the unregistered mark SYMARK SOFTWARE because:

(a) Complainant is the undisputed and exclusive owner of the SYMARK registered trademark and service mark.

(b) Under United States law, this registration is prima facie evidence of the validity of the registered mark.

(c) In addition, this registration constitutes constructive notice of Complainant’s rights.

(d) So too, Complainant maintains that it also has “common law” or “use-based” rights in the unregistered trademark and service mark “SYMARK SOFTWARE”. This alleged unregistered SYMARK SOFTWARE mark is clearly identical to Respondent’s domain name and constitutes an independent basis for a finding that the Complainant has met its burden of proving paragraph 4(a)(i) of the Policy.

(e) The SYMARK and SYMARK SOFTWARE marks are well-known in the international computer software industry. Consumers have come to immediately recognize these marks and to associate them with Complainant’s information security software.

(f) As a result of Complainant’s extensive use, Complainant has acquired valuable goodwill in these marks.

(g) The test of confusing similarity is confined to a consideration of the disputed domain name and the trademark. Disney Enterprises. Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (“essential” or “virtual” identity with a mark is sufficient to demonstrate confusing similarity).

(h) Here such confusing similarity and virtual identity exists because the only differences between Complainant’s registered mark and the domain name in dispute are inconsequential: The disputed domain name only adds the generic word “software”. Because “software” is the primary product which: (i) Complainant has been selling for 20 years; (ii) is covered by Complainant’s trademark registration; and (iii) is the product with which the mark is identified in the public’s mind, the overall impression is of conceptual identity, and thus confusing similarity.

(i) In addition, the mere addition of a descriptive or generic word, e.g., “software”, to a well-known trademark is not sufficient to avoid consumer confusion or infringement. Here, confusion is highly likely because Complainant’s registered SYMARK trademark is specifically linked to computer software. As the panel in Viacom International, Inc. v. Matrix Management and T. Parrot, WIPO Case No. D2001-1442, stated in finding the domain name <mtvvideos.com> was confusingly similar to the famous MTV mark: “concatenating the term ‘videos’ to the Complainant’s mark…to form the contested domain name does not dispel any confusion, rather it likely exacerbates it”. Accord, Frederick’s of Hollywood, Inc. v. Bob L. Reichenberg, WIPO Case No. D2002-0667, (finding combination of trademark FREDERICK’S owned by Complainant who sold lingerie, with the descriptive term “lingerie” only enhances confusion, transfer of disputed domain name <frederickslingerie.com> ordered).

(j) Several other UDRP panels have found the existence of confusing similarity where, as here, the term “software” is appended to a registered trademark to form the domain name in dispute. This is especially true if the Complainant’s trademark is identified in some manner with the computer software industry. For example, in Pivotal Corporation v. Discovery Street Trading Co., Ltd. WIPO Case No. D2000-0648, the Complainant, Pivotal Corporation, a computer software manufacturer, owned several registered marks that contained the term “Pivotal”. The Complainant was also known as “Pivotal Software Inc.” and used the term “Pivotal Software” in association with its software products. In addition, Complainant had previously registered the domain name <pivotal.com>.

(k) In the Pivotal v. Discovery Street case, in ordering the transfer of the domain name in dispute, the panel found that: (1) the term “software” was purely descriptive, and that the absence of a registration for the phrase “pivotal software” was of no import; (2) the registered mark was sufficiently distinctive of Complainant’s products and services, even though the mark had only been registered for five years (which the panel acknowledged could be viewed as a considerable amount of time in the software industry); and (3) confusing similarity existed because the challenged domain name was derived from a registered mark and the word “software” described the nature of the business for which the mark was registered.

(i) So too here, where the Complainant develops and licenses software, and the domain name in dispute merely appends the word “software” to the registered mark, the same result should entail. Indeed, the addition of the word ‘software’ “does not dispel any confusion, rather it likely exacerbates it”. See, Viacom International. v. Matrix Management, supra.

(m) Other UDRP panel decisions have reached similar results in cases that, like here, involve the creation of a domain name by adding the term “software” to the registered mark of a complainant whose business is in the computer software or information technology industries. See, Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; Sharman License Holdings. Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659; Sharman License Holdings. Limited v. Domains at Fabulous, WIPO Case No. D2004-0915.

(n) The decisions in these cases reflect the reality that Internet users will frequently enter a trademark with an associated word (such as in this case with the terms “Symark” and “software”) into their browsers when attempting to find a website identified by a Complainant’s mark. Because of this common behavior, an Internet user can easily become confused believing that the website reached is linked to the legitimate trademark owner’s business when, in fact, it is not.

(o) An analogous line of UDRP panel decisions where trademarks are linked to words (other than the term “software”) which are in some manner related to a legitimate trade or service mark also support Complainant’s position. Examples include: American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602 (finding confusing similarity between Complainant’s well-known SOLGAR mark that was registered for use in connection with the sale of vitamins and the domain name <solgarvitamins.com>); Guinness UDV North America v. Timothy Nicholas Llewellyn Lewis, WIPO Case No. D2001-0621 (finding confusing similarity between well-known vodka mark SMIRNOFF and the domain name <smirnoffbar.com>); Quixtar Investments. Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding legal identity between complainant’s QUIXTAR trademark and the disputed domain name <quixtarmortgage.com>); GA Modefine SA v. AES Optics, WIPO Case No. D2000-0306 (“[T]rademarks of Complainant [for “Armani”] are identical to the domain name <armani-sunglasses.com> … [and] the adjunction of the word ‘sunglasses’ cannot modify the attractive power of the [trademark]”); Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283, (<fortehotels.com> confusingly similar to FORTE trademark registered for use in connection with the hotel industry); Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (<catmachines.com> confusingly similar to the CATERPILLAR and CAT trademarks owned by manufacturer of earth moving and construction machinery.)

(p) As a final point, Complainant notes that it is well-settled that the addition of the generic top level domain name extension “.com” to a protected mark makes no essential difference. So too here, the addition of the “.com” extension should not preclude a finding of identity or confusing similarity.

2. Respondent has no rights or legitimate interests with respect to the disputed domain name <symarksoftware.com> because:

(a) First, Respondent has not received any permission or license from Complainant to use its protected marks.

(b) Second, upon information and belief, Respondent has no business or other reason for using Complainant’s registered SYMARK trademark or unregistered SYMARK SOFTWARE mark. So too, Respondent is not commonly known by the names SYMARK or SYMARK SOFTWARE. In the same vein, Respondent has never conducted any prior business under these names.

(c) Third, Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name. To the contrary, Respondent is using <symarksoftware.com> for an illegitimate commercial purpose by misleading Internet users who are searching for Complainant’s products and website and then diverting them to a “knock-off” webpage that ostensibly exists for the sole purpose of generating revenue for the Respondent from posted, third-party advertisements.

(d) Fourth, Respondent’s improper registration also has the pernicious effect of blocking Complainant from using an intuitive domain name that incorporates its key product category.

(e) Fifth, Respondent is not now, and has not in the past used the <symarksoftware.com> domain name, or a name corresponding to that domain name, in connection with a bona fide offering of goods or services.

(f) Sixth, in the course of improperly using the disputed domain name, Respondent has infringed upon Complainant’s legitimate rights by constructing a webpage that blatantly misappropriates Complainant’s marks and copyrighted material.

3. The domain name <symarksoftware.com> should be considered as having been registered and used in bad faith by Respondent because:

(a) First, Respondent has deliberately registered and used a domain name to which he has no legitimate claim.

(b) The disputed domain name is confusingly similar and essentially identical to Complainant’s registered SYMARK trademark since it completely incorporates that mark and couples it with the generic product category “software”, the product line with which it is most closely associated.

(c) In addition, Respondent’s domain name is identical to Complainant’s unregistered SYMARK SOFTWARE mark in which Complainant has common law rights. Respondent has registered the disputed domain name with obvious knowledge of Complainant’s marks and its continuous association with computer software. It is simply inconceivable that Respondent accidentally or coincidentally conceived of the domain name in dispute.

(d) Registrant’s true bad faith intentions are established by the Respondent’s self-evident careful planning and design of the webpages to which the <symarksoftware.com> domain name resolves. In short, these webpages are almost a clone of Complainant’s official website, containing Complainant’s registered mark and other copyrighted material.

(e) However, unlike Complainant’s website, Respondent’s webpages contain “Sponsor Ads” for ostensible third parties wholly unrelated to Complainant’s business.

(f) Complainant submits that with each visit to Respondent’s webpage, and with each click through to a faux “link” that circles the user back to Respondent’s webpage, Respondent presumably collects a fee from the advertisers whose “Sponsor Ads” are presented on Respondent’s counterfeit webpages.

(g) Moreover, Complainant contends that if a user were to actually click on one of the advertisements that appear on Respondent’s webpages, then the Respondent would purportedly collect a fee for that redirected traffic as well.

(h) The confusion experienced by the Internet user is heightened because the advertisements that are posted on Respondent’s website are actually referred to as “Sponsor Ads”. This egregious conduct alone is enough to sustain a finding of bad faith. See, Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158.

(i) In short, Respondent’s webpages, to which the domain name in dispute directs traffic, present a confusing hurdle to a user’s search for the Complainant’s official page. Its sole purpose is to entice users to click onto one of the displayed advertisements so that the Respondent can generate revenue. This blatant piggybacking on Complainant’s marks is nothing short of an infringement of Complainant’s legal rights.

(j) Complainant further alleges that the Respondent has also registered and used the domain name in dispute to disrupt Complainant’s business by engaging in cyberpiracy for the deliberate purpose of confusing Complainant’s potential customers who know of Complainant’s trademark and its popular software products so as to divert them to a website that exists solely to generate advertising revenues for Respondent.

(k) Likewise, Complainant argues that Respondent’s actions also constitute cybersquatting since its domain name registration precludes Complainant from deploying the intuitive domain name for the use of its customers and potential customers

(l) Respondent has also been unresponsive to Complainant’s attempts at communication. In fact, any correspondence that Complainant has mailed to Respondent has been returned to the sender. This is yet another indicia of Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, the Panel has fully reviewed the statements and documents submitted in accordance with the Policy, the Rules and the applicable principles of law that apply to this dispute. In so doing, not only has the Panel conducted a review of the submissions of Complainant, but also, pursuant to paragraph 14(b), has drawn appropriate inferences from Respondent’s default. After considering all the relevant facts and law, the Panel makes the following findings in accordance with paragraph 4(a) of the Policy.7

A. Identical or Confusingly Similar

In accordance with paragraph 4(a)(i) of the Policy, the Complainant must prove that the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark. The Complainant has met its burden of proof.

First, Complainant has submitted sufficient evidence to establish that it is indeed the owner of the registered trademark for SYMARK. More importantly, Complainant properly asserts that the coupling of a generic term such as the word “software” to a registered trademark, especially in circumstances such as those found here where the additional word is directly linked to the trademark owner’s services or products, compels the conclusion that the domain name in dispute is indeed “confusingly similar”.

Moreover, Complainant is correct that prior URDP panels have made the same determination that in cases in which a complainant’s trademark has been tied to the term “software”, the disputed domain name has been found to have been confusingly similar. See, Pivotal Corporation v. Discovery Street Trading Co., Ltd. WIPO Case No. D2000-0648; Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; Sharman License Holdings. Ltd. v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659; Sharman License Holdings. Ltd. v. Domains at Fabulous, WIPO Case No. D2004-0915.

However, in addition to the cases cited by Complainant, the following URDP panel decisions support the exact same conclusion. Altavista Corporation v. Brunosousa, aka Bruno Sousa, WIPO Case No, D2002-0109 (disputed domain name <altavistasoftware.com> ordered transferred “particularly given the Complainant’s close association with the Internet generally and software and browsing services specifically”); Ikarus Software GmbH v. Longo, WIPO Case No. D2004-0646, (<ikarus-software.com> ordered transferred where “[t]he addition of the purely descriptive element “software” in the domain name does not have a relevant influence on the distinctiveness of the Element IKARUS which clearly carries the weight of the designation <ikarus-software.com>”.)

With regard to Complainant’s contention that it also has a common-law right in the unregistered trademark SYMARK SOFTWARE, the Panel turns to the recently published WIPO Decision Overview § 1.7 (available at “http://www.wipo.int/amc/en/domains/search/overview/”)8 to ascertain the appropriate standard to review Complainant’s argument. That section, in relevant part, states that

“[t]he [C]omplainant must show that the name has become a distinctive identifier associated with the [C]omplainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” (citations omitted).

Here, Complainant has submitted copies of several computer software publications that demonstrate that the Complainant, as well as others in the industry, commonly and frequently use “Symark Software” when referring to both Complainant and its products. These documents also reflect, as represented by Complainant, that this association with the name “Symark Software” has been on-going for approximately twenty years. So too, Complainant has submitted papers that report increasing and significant sales of its products which use the SYMARK SOFTWARE designation. In the Panel’s view, this evidence is sufficient to establish Complainant’s assertion that it has attained a common law trademark in the SYMARK SOFTWARE designation.

Because Complainant has proved that it also has a common law right to the SYMARK SOFTWARE mark, it has succeeded in establishing its alternative theory that the domain name in dispute is not only “confusingly similar”, but indeed, “identical” to Complainant’s protected legal rights.9 Accordingly, Symark has satisfied this portion of the Policy.

B. Rights or Legitimate Interests

The Panel also finds convincing Complainant’s position that the Respondent has no rights or legitimate interests in the domain name as required by paragraph 4(a)(ii) of the Policy. The manner in which a Complainant can prove this element, especially when confronted with a defaulting Respondent, is also now generally accepted. Again, as stated in the WIPO Decision Overview at Section 2.1,

“While the overall burden of proof rests with the Complainant, Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore, a Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

Complainant has made out its prima facie case. To briefly reiterate, Respondent has never obtained permission or any license from Complainant to utilize either the registered mark SYMARK or the unregistered common-law trademark SYMARK SOFTWARE. In addition, Respondent has no business or other reason for using Complainant’s marks. Neither is Respondent commonly known by the names “Symark” or “Symark Software”. The record is devoid of evidence that Respondent has conducted any prior business under these names, or any other name. Furthermore, Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name. Indeed, as discussed in more detail in Section 6 C, infra, Respondent’s use of the domain name in dispute is for an improper purpose.

In conclusion, because Respondent has defaulted, a review of the three examples of possible defenses set forth in paragraph 4(c) of the Policy is unnecessary. Thus, on this record, Complainant has satisfied paragraph 4(c)(ii) by demonstrating that the Respondent has neither a right nor a legitimate interest in the challenged domain name.

C. Registered and Used in Bad Faith

The final prong of the Policy that the Complainant must satisfy is to show that the disputed domain name was both registered and used in bad faith. In so doing, paragraph 4(b) of the Policy sets out four illustrative, non-exclusive circumstances, which, if demonstrated by the Complainant, for the purposes of paragraph 4(a)(iii) is deemed to be evidence of a Respondent’s bad faith registration and use. The Complainant here has established the following points:

As has already been discussed in Sections 6. A. and 6. B. above, the Complainant has shown that the Respondent deliberately registered and used a domain name to which he has no legitimate claim. Similarly, the disputed domain name is confusingly similar to Complainant’s registered trademark and identical to Complainant’s unregistered common law mark. These two factors also support a bad faith finding.

However, this record reveals additional support for Complainant’s position. The website to which the disputed domain resolves contains pages that are strikingly similar to those which are maintained by the Complainant on its official website. Indeed, Respondent’s website compounds its misuse of both Complainant’s registered and common law marks by displaying those marks, without permission or attribution, on its webpages. Moreover, Respondent has lifted other copyrighted material from the Complainant’s website and presented it as its own. Indeed, there is not even a disclaimer on Respondent’s website to the effect that what is being viewed is not in any manner connected to the Complainant. To the contrary, a review of the webpages makes obvious that Respondent wants the visitor to believe that they are viewing the website of the Complainant.

When these facts are joined with the unrebutted proof that Respondent’s website contains hyperlinks in “Sponsor Ads” that are also not connected to the Complainant, then the Complainant’s proffer that the purpose of the website is to profit by means of obtaining “click-through” revenue actually seems to be the only logical conclusion that can be reached. Thus, Complainant has demonstrated that the disputed domain name generates income to the Respondent by inducing Internet users to click through to sponsored links. Such use of the domain name in dispute establishes the “bad faith” practice which the Policy expressly prohibits. Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032; Banco Espírito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890; CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark, WIPO Case No. D2004-0330; Eurochannel, Inc. (f/k/a Multithematiques, Inc.) v. Papete.com, WIPO Case No. D2005-0318 (“knowing diversion, for commercial gain, of traffic intended for the trademark holder deprives Respondent’s use of the domain name of any rightful or legitimate character”).

As a final point, the Respondent has also provided inaccurate information to the Registrar, thus frustrating any attempt by any party to effectuate communications. Such actions have long been seen as a factor showing bad faith intent in registering a domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Bank for International Settlements v. BFIS, WIPO Case No. D2003-0984.

In light of these determinations, the Panel finds that the Complainant has met its burden of establishing the requisites of paragraph 4(c)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <symarksoftware.com> be transferred to the Complainant.


Craig Edward Stein
Sole Panelist

Dated: June 15, 2005


1 The case file shows that the Center’s March 11, 2005 e-mail was delivered to the server for the law firm of Complainant’s counsel on the same day that it had been sent. However, because of a transcription error, the message was apparently not delivered to the appropriate attorney. On the other hand, Respondent’s e-mail was returned to the Center on March 16, 2005, five days after it was originally transmitted, with a notation that the “connection [was] refused by symarksoftware.com”. In addition, the Center’s e-mail of April 4, 2005, that re-transmitted both the Complaint Deficiency Notification and the confirmation of the new deadline was returned to the Center from Respondent’s listed e-mail address on April 9, 2005 (again five days after the transmission had been sent) with the same explanatory message.

2 Once again, the e-mail communication to the address Respondent had provided to the Registrar for submission to the WHOIS database was returned to the Center with the message “connection [was] refused by symarksoftware.com”. This time, the rejection notification arrived only three days after having been sent, on April 11, 2005. A hard copy of the Notification of Complaint and Commencement of Administrative Proceedings, the Complaint and Amendment were sent to the Respondent via courier on April 8, 2005 as well. These documents were returned to the Center as being undeliverable at the physical address that had been provided by the Respondent to the Registrar. The Panel notes that the courier was also provided with the phone number Respondent submitted to the Registrar, but apparently, the courier service was unable to successfully contact anyone to complete delivery of the documents.

3 As before, the e-mail was returned to the Center and for the same reason. The rejection message was transmitted to the Center on May 7, 2005.

4 Complainant first registered this domain name on August 24, 1994.

5 Curiously, as one goes through the links to additional pages on this website, strange, out-of-context phrases begin to appear embedded within the text. Eventually, the text devolves into unintelligible gibberish.

6 This page also contains the notation “[t]his domain name has expired on June 6, 2005”. The WHOIS database reveals that the Registrant of the domain name <freebannertrade.com> is a Hali Bote Corporation. In addition, the registration information states that “[t]his Domain Name has expired. In this status the domain name is inactive. This domain name will be activated once it is renewed. The Owner of this domain name can renew this domain name from their control panel. If this domain name is not renewed by 16-Jul-2005, it will be permanently deleted”.

7 Any argument advanced by Complainant, but not expressly discussed herein, has been considered by the Panel but has been deemed superfluous as a result of the determinations as memorialized in this decision.

8 As recently stated in Scotsman Publishing, Inc. v. LaPorte Holdings, Inc, WIPO Case No. D2005-0228, “although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panels during the first five years of administration of the UDRP. Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061. Accordingly, when such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).”

9 Complainant is also correct in maintaining that the addition of the generic top-level domain (gTLD) “.com” is not relevant to our inquiry. Indeed, this point is now so well-established that it hardly bears mentioning. See, Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, (“since use of a gTLD is required, necessary and functional to indicate use of a name in Internet … for the average Internet user it would not confer any further distinctiveness to any name”).