Complainant is Interapptive, Inc. of Ballwing, Missouri, United States of America represented by Law office of Eleanor Maynard, LLC of United States of America.
Respondent is Z-Firm LLC of Seattle, Washington, United States of America.
The disputed domain names <myshipworks.com> and <shipwerks.com> (the “Domain Names”) are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2009. On July 28, 2009, the Center transmitted by e-mail to
Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On July 28, 2009, Network Solutions, LLC transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for a Response was August 30, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on August 31, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 3, 2009. 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.
Complainant manufactures software used for managing online sales transactions and shipments. Complainant began using the mark SHIPWORKS for this software in April 2004, and obtained a registration for that mark with the United States Patent and Trademark Office on October 30, 2007. Complainant also does business at a website accessible at the domain name <shipworks.com>.
Respondent also markets shipping software under the name “ShipRush.” Some of Respondent's products overlap and compete with Complainant's.
In June 2004, Mr. Zimberoff, Respondent's president, met the owners of Complainant at a trade conference at which Complainant was exhibiting its products. Mr. Zimberoff purchased a Shipworks software CD while at the conference.
In February 2006, Respondent registered the Domain Name <shipwerks.com>. In September 2008, Respondent registered the Domain Name <myshipworks.com>. By December 2008, the former Domain Name was pointed to Respondent's website, where products in competition with Complainant's Shipworks products are sold. The latter Domain Name remains “parked.”
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each Domain Name:
(i) the Domain Name 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.
Complainant clearly has rights in the mark SHIPWORKS through registration and use. The record supports this conclusion, and Respondent has not disputed it.
The Domain Name <myshipworks.com> incorporates Complainant's mark in its entirety, and then adds the word “my” at the beginning. In the Panel's view, the additional word does not negate the confusing similarity between the SHIPWORKS mark and the Domain Name. See Verio Inc. v. Sunshinehh, WIPO Case No. D2003-0255 (June 24, 2003) (<1verio.com> held confusingly similar to VERIO mark).
The Domain Name <shipwerks.com> is also confusingly similar to Complainant's mark. The spelling is identical except for one letter, and the two words sound identical.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) 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 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
There is no evidence that Respondent has ever been authorized to use Complainant's mark in a domain name or otherwise.
Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or that it has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Respondent has not claimed any noncommercial or fair use of the SHIPWORKS mark in its Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies chiefly on paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument. Both arguments are meritorious.
The Panel finds on this record that Respondent is a competitor of Complainant. First, Respondent does not deny this allegation. Second, it is reasonable to conclude that the parties are generally in the same line of business since they attended the same trade conference. Third, the parties' products appear to overlap. Respondent's use of the Domain Name <shipwerks.com> appears designed to disrupt Complainant's business. This is bad faith under paragraph 4(b)(iii).
With respect to paragraph 4(b)(iv), Complainant alleges, and Respondent has not denied, that Respondent's conduct constitutes an intentional attempt to attract, for commercial gain, Internet users to Respondent's site by creating a likelihood of confusion between the SHIPWORKS mark and the <shipwerks.com> Domain Name. The conclusion that Respondent is seeking to siphon off business from Complainant is inescapable on this record.
There is no reason to reach a different conclusion with respect to the currently inactive <myshipworks.com> Domain Name. There is no requirement under the Policy that Complainant must wait until Respondent has linked each of its infringing Domain Names to its own website before a “bad faith” finding may be made. Rather, Respondent's “bad faith” regarding one Domain Name may, in appropriate circumstances like those present here, be imputed to another Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is 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 names <myshipworks.com> and <shipwerks.com> be transferred to Complainant.
Robert A. Badgley
Dated: September 7, 2009