WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ScriptLogic Corporation v. Scriptlogic Pacific Pty. Limited
Case No. DAU2008-0009
1. The Parties
The Complainant is ScriptLogic Corporation, Boca Raton, Florida, of United States of America, represented by Belzer PC, United States of America.
The Respondent is Scriptlogic Pacific Pty. Limited, Melbourne, Victoria, of Australia.
2. The Domain Name and Registrar
The disputed domain name <scriptlogic.com.au> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2008. On April 23, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 25, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response disclosing underling registrant and contact information for the disputed domain which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Center on April 29, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 3, 2008. 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 is a company incorporated in the United States of America engaged in selling computer network administration software for Microsoft Windows-based networks under the trademark SCRIPTLOGIC. It has used the SCRIPTLOGIC trademark for that purpose since 1999.
The Complainant is the registered owner of several trademarks for SCRIPTLOGIC, two significant ones being:
(a) Trademark Registered Number 2,768,874, registered with the United Sates Patent and Trademark Office on September 30, 2003 for SCRIPTLOGIC; and
(b) Trademark Registered Number 1001074, registered with IP Australia on May 2, 2002 for SCIPTLOGIC.
It has also registered the domain name <scriptlogic.com> which resolves to a website through which the Complainant conducts its business.
The Respondent was incorporated by a former reseller of ScriptLogic software products. It registered the disputed domain name on February 13, 2008. The domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant alleges that the domain name <scriptlogic.com.au> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant’s trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered or subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the SCRIPTLOGIC trademarks to which reference has already been made. It then contends that as the disputed domain name consists of the entirety of the word trademark SCRIPTLOGIC it is identical to the trademarks.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because it has not been using the domain name for any bona fide offering of goods or services.
Finally, the Complainant contends that the domain name was registered or is subsequently being used in bad faith. It contends that this is so because the Respondent has never used the domain name in connection with a bona fide business interest or sale of goods or services, the Respondent is a company formed by a former reseller of ScriptLogic software products , did not and does not have the Complainant’s permission to use the SCRIPTLOGIC mark or brand and has been motivated by a desire to prevent the Complainant from reflecting its mark in a corresponding domain name in retaliation for grievances relating to the termination of the former reseller’s relationship with the Complainant or by a desire to disrupt the business activities of the Complainant.
The Respondent did not submit a formal Response to the Complainant’s contentions. However, it sent an email to the Complainant’s attorneys which said as follows:
“These people have never bothered to contact us at any time to talk about a much simpler way forward.
Judges in Australia don’t take kindly to organizations who simply try to ‘monster’ others into yielding to their brute force,
Judges in Australia like to see both parties make every attempt to settle matters privately,
To date, Scriptlogic has made zero attempts,
This is our attempt & we’ere even making it as easy as we can for both Scriptlogic & WIPO
Brandi, please speak to Scriptlogic Inc & suggest to them that that ought to make us a modest offer for the domain.
I promise to provide them with a very prompt response.
We reserve all our rights in this matter.”
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel therefore turns to discuss the various issues that arise for decision on the facts.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name is identical to the SCRIPTLOGIC trademarks, details of which appear above. The combined words in the domain name are identical to and are pronounced the same as those in the trademark and are on any other test identical.
It has also been held in many Uniform Dispute Resolution Policy (“UDRP”) and auDRP cases that suffixes like ‘.com.au’ cannot negate identicality or confusing similarity that otherwise exists, as it does here.
Accordingly the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services; or
(ii) you [Respondent] (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; or
(iii) you [Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows he has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the registrant is in default and does not file a Response. The Respondent was given notice that it had until May 25, 2008 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default. It is however true that the Respondent sent a letter to the Complainant’s attorneys setting out its views on the proceedings and more reference will be made to this letter at a later stage.
Paralleling the auDRP, it is also well established that, as it is put in the Overview of WIPO Panel Views on Selected UDRP Questions (‘the Overview’) and the decisions cited therein that “…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,” or as in the .au Rules.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
That finding is based on the facts that the Respondent chose for its domain name a name identical to the Complainant’s trademark, the Complainant has never given the Respondent permission to use its trademark in a domain name and the domain name is not being used for any apparently legitimate purpose.
The Respondent has not made an attempt to rebut this prima facie case by means of a Response, but it has expressed its views in the letter already referred to. It is only fair to the Respondent to consider this letter and its contents.
Having given careful consideration to the letter, the Panel concludes that it does not rebut the prima facie case that the Complainant has made out. Indeed, nowhere in the letter does it claim that the Respondent has a right or legitimate interest in the domain name. It states that the Complainant should have made an attempt to settle the differences between the parties, but that it has not done so, whereas the Respondent itself stands ready to consider any modest offer to buy the domain name that the Complainant might make. These matters do not form the basis of a claim of right, but if anything, tend to suggest that the Respondent does not trenchantly maintain that it has any such right or interest. In any event, the letter contains nothing that could be said to show a right or legitimate interest on the part of the Respondent in the domain name.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has therefore made out the second of the three elements that it must establish.
C. Registered or Subsequently Used in Bad Faith
The Complainant must prove on the balance of probabilities that the domain name was registered in bad faith or that it has subsequently been used in bad faith.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
“(i) circumstances indicating that you (the Respondent) have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you (the Respondent) have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you (the Respondent) have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you (the Respondent) have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
The Complainant relies specifically on paragraph 4(b)(ii) and (iii) and also on a general notion of bad faith based on its allegations that the Respondent was incorporated by a disgruntled former reseller of the Complainant.
As has been said above, the Respondent’s only response to these allegations is that the Complainant is too hasty and too demanding and that it should offer to buy the domain name.
As with the consideration of this reply to see if it made out a case of right or legitimate interest, so likewise for present purposes, the Respondent’s difficulty is that it does not deny the allegations of bad faith made against it. It clearly saw those allegations in the Complaint, for that was what prompted it to send the letter, but it did not deny the issue of alleged bad faith put in issue by the Complainant’s allegations against it.
Accordingly, the Panel finds those allegations established.
In any event, the evidence supports the conclusion that a case has been made out by the Complainant under paragraphs 4(b)(ii) and (iii) of the Policy and the Panel so finds.
The Complainant has therefore established the third of the three elements that it must establish.
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 <scriptlogic.com.au> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: June 16, 2008