WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thawte, Inc. v. ThawteChina, Inc.
Case No. D2006-1468
1. The Parties
The Complainant is Thawte, Inc., Mountain View, California, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.
The Respondent is ThawteChina, Inc., Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thawtechina.com> is registered with eNom, Inc. (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2006. On November 16, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On November 17, 2006, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 20, 2006.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 9, 2007. 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
Complainant is Thawte, Inc., a wholly owned subsidiary of VeriSign, Inc. Complainant was founded in 1995 and was one of the first recognized Certification Authorities (“CA”) on the Internet. It has become the second largest CA in the world. Complainant was acquired by VeriSign, Inc. in 2000, becoming one of the market leaders in providing products and services to confer secure transactions over the Internet for its customers.
Complainant currently owns U.S. Reg. No. 3,159,438 for the THAWTE mark and it has used different versions of the THAWTE mark (stylized and unstylized) since at least 1996 in connection with digital identity certification products and services in the area of web security and payment and other Internet-related products and services (collectively, “the Mark”). Also, Complainant registered the domain name <thawte.com> on February 10, 1996, which it has used in association with its business since that time. In addition to the above-referenced United States of America registrations, Complainant alleges that it owns numerous registrations and pending applications worldwide for the THAWTE mark.
Complainant’s products and services are made available through its websites, direct sales and resellers, affiliates, and partners around the world. Over the past decade, Complainant has grown its Partner Program, through which a partner company is authorized to provide the Complainant’s products and services, to include over 17,000 companies making it the largest of its kind in the world. Complainant spends in excess of 250 million US dollars per year to advertise and promote the Mark and the <thawte.com> domain name. As a result of the foregoing, Complainant has developed valuable goodwill in the Mark and the <thawte.com> domain name.
On January 26, 2006, Respondent registered the Domain Name with eNom. The Domain Name does not resolve to an active website.
On June 23, 2006, Complainant’s counsel wrote Respondent by U.S. Certified Mail service and electronic mail, demanding that Respondent cease and desist use of the Domain Name and transfer the registration for the Domain Name to Complainant. The mailed correspondence was returned as “not deliverable as addressed”. On July 20, 2006, Complainant’s counsel wrote the registrar in the hopes of having the registrar forward the cease and desist letter to Respondent and transfer the domain name to their client.
5. Parties’ Contentions
Complainant contends that Respondent’s second level domain name (<thawtechina.com>) is nearly identical to Complainant’s second level domain name in that the Domain Name fully incorporates Complainant’s mark THAWTE, merely adding the geographically descriptive term “China”. Complainant also contends that Respondent is not a licensee of Complainant nor is it authorized to use the Mark or Complainant’s <thawte.com> domain name. Complainant also contends that Respondent has no rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith. For these reasons, Complainant requests that the Panel transfer the Domain Name to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences therefrom as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent 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
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
It is uncontroverted that Complainant has established rights in the Mark based on its long-standing use of it in connection with its digital identity certification products and services, as well as its U.S. trademark registration for the mark THAWTE. Likewise, Complainant has established rights in its domain name <thawte.com>. Complainant’s registration is entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Furthermore, the Domain Name <thawtechina.com > incorporates the word “thawte” which is identical to Complainant’s Mark (THAWTE) and its domain name <thawte.com> and simply adds the geographic term “China”. It is well-established that the incorporation of a trademark in its entirety in a domain name is sufficient to establish confusing similarity, and that the addition of a geographically descriptive term to a trademark is not sufficient to escape a finding of confusing similarity because it fails to change the overall impression of the designations as being connected to the Complainant. See, VeriSign, Inc. v. Nandini Tandon, WIPO Case No. D2000-1216 (November 16, 2000) (finding confusing similarity where the disputed domain name merely added the word “India” to the Complainant’s VERISIGN mark). Furthermore, because Complainant does business worldwide, including in China, Respondent’s addition of the term “China” to Complainant’s THAWTE mark simply compounds the confusion.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its Mark or domain name in connection with Respondent’s website. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is 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.
Respondent has provided no evidence to carry its burden. In fact it is undisputed that Respondent registered the Domain Name long after Complainant adopted and used the Mark and its domain name and obtained a United States of America trademark registration for THAWTE.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
There is no evidence in the record supporting any of the above-mentioned nonexclusive factors, nonetheless Complainant has carried its burden of proving that Respondent registered and is using the Domain Name in bad faith. Complainant claims that THAWTE is an arbitrary term that was coined by the company’s founder in 1995, more than 10 years prior to Respondent’s registration of the Domain Name. On the record presented, this assertion stands unrebutted. Furthermore, when registering the Domain Name, Respondent had both constructive and actual notice of Complainant and its Marks because (1) Complainant owned at least one issued trademark registration for the THAWTE mark from the United States Patent and Trademark Office before Respondent registered the Domain Name; (2) Complainant or its parent company owned registered trademarks throughout the world for the THAWTE mark before Respondent registered the Domain Name; and (3) Complainant had been using the Mark for at least ten years before Respondent registered the Domain Name. In the face of these uncontested facts, Respondent’s adoption of a domain name that is confusingly similar to the Mark and Complainant’s domain name is evidence of bad faith. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (holding that to have proceeded with registration of an infringing domain name knowing of Complainant’s rights in the mark and use of the mark demonstrates Respondent’s bad faith registration).
Similarly, there is ample evidence of Respondent’s bad faith use of the Domain Name. On June 23, 2006, Complainant’s counsel sent correspondence to Respondent by U.S. Certified Mail service and electronic mail, demanding that Respondent cease and desist use of the Domain Name and transfer the registration for the Domain Name to Complainant. The correspondence was returned as “not deliverable as addressed”. The address to which the letter was sent, however, is the same address that Respondent provided to the registrar when registering the Domain Name. Respondent never responded to counsel’s letter. Not responding to the cease and desist letter, using a fictitious address and not responding to the Complaint is the type of conduct that has been deemed to constitute bad faith.
Moreover, there is no evidence that Respondent has ever used or activated the Domain Name to resolve to an active website further. Similar facts were presented in Accor v. Howell Edwin, WIPO Case No. D2005-0980 (November 22, 2005) wherein the respondent in that case registered a domain name using a known trademark combined with the generic abbreviation for corporation, “corp”, but the domain name did not resolve to an active website. The Panel found that the registering and use of the domain name <accor-corp.com> constituted bad faith because “only someone who was familiar with the Complainant’s mark would have registered the identical domain name”, and the fact that the domain name in that case did not resolve to a website or other on-line presence, was deemed bad faith use. Id.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <thawtechina.com> be transferred to Complainant.
Harrie R. Samaras
Dated: January 23, 2007