WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interapptive, Inc. v. Z-Firm LLC
Case No. D2010-1270
1. The Parties
Complainant is Interapptive, Inc. of Ballwin, Missouri, United States of America, represented by the Law Office of Eleanor A. Maynard, LLC, United States of America.
Respondent is Z-Firm LLC of Seattle, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <intrapptive.com> and <shipwrks.com>, are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 29, 2010. On July 30, 2010, the Center transmitted a request for registrar verification in connection with the disputed domain names to Network Solutions. On the same day, Network Solutions responded by email confirming that Respondent is listed as the registrant and providing contact details and other information pertinent to the registrations.
After receiving confirmation from Complainant that the Complaint was sent to Respondent in accordance with paragraph 2(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on August 24, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on September 2, 2010. 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 owns United States federal trademark registrations for the marks SHIPWORKS, registered in October 2007, and INTERAPPTIVE, registered in December 2006, for software and computer services, among other things, used to manage sales transactions, customer records, and shipments.
Respondent registered the disputed domain names, <intrapptive.com> and <shipwrks.com>, in February 2006. Both domain names are currently used to direct visitors to websites that appear to be very similar to Respondent’s website at “www.zfirm.com”, and that offer Respondent’s own “Shiprush” software for shipping packages.
5. Parties’ Contentions
1. Identical or Confusingly Similar
The <shipwrks.com> domain name is confusingly similar to Complainant’s SHIPWORKS trademark, which it uses in connection with software and service for managing e-commerce sales transactions, customer records, and shipments. It is also confusingly similar to the domain names that Complainant has registered and uses, including <shipworks.com> and <shipworks.net>. The domain name is identical to Complainant’s mark in sound and meaning, differing in appearance by only one letter.
The <intrapptive.com> domain name is confusingly similar to Complainant’s INTERAPPTIVE trademark and <interapptive.net> and <interapptive.org> domain names for the same reasons.
2. Rights or Legitimate Interests
Like Complainant, Respondent offers shipping software; Respondent’s software is offered under the name “Shiprush.” These products are similar to and compete with Complainant’s products.
In 2004, Respondent’s president, Rafael Zimberoff, met the owners of Complainant’s company at a conference. At that time, Mr. Zimberoff learned about Complainant’s SHIPWORKS software and purchased a copy. Complainant provides a copy of the sales receipt for the purchase, which displays both the SHIPWORKS mark and the “Interapptive” company name.
In February 2006, Respondent registered the domain names and subsequently began using them to direct Internet users to websites that offer the “Shiprush” product.
Respondent has no legitimate rights or interests in either of the domain names, but instead appears to be using them to confuse Complainant’s customers and potential customers into believing that they are accessing Complainant’s SHIPWORKS software or other products at Respondent’s website.
3. Registered and Used in Bad Faith
Respondent registered the domain names after meeting the owners of Complainant in 2004 and purchasing Complainant’s SHIPWORKS software. It is clear that Respondent registered the domain names and is using them in a deliberate attempt to capitalize on the goodwill associated with Complainant’s trademarks and to create confusion among consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing software.
In 2009, Complainant filed a complaint under the UDRP against Respondent for its registration and use of two other domain names, <myshipworks.com> and <shipwerks.com>, and was successful. Had Complainant been aware of the disputed domain names, it would have included them into its prior complaint.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to each domain name in dispute, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to it;
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) a domain name before the dispute, being known by a domain name, or making legitimate noncommercial or fair use of a domain name, that might support a finding that Respondent has rights or legitimate interests in the domain names. Further, Respondent has provided no evidence or argument on the issue of bad faith.
A. Identical or Confusingly Similar
Complainant has established its rights in the marks SHIPWORKS and INTERAPPTIVE by virtue of the evidence of its United States federal trademark registrations.
The disputed domain names are not identical to Complainant’s marks. Each domain name differs from one of Complainant’s marks by only one letter, however. As a result, the domain names are very similar in appearance, pronunciation, and overall connotation (the addition of the generic top-level domain “.com” is not relevant for these purposes).
Accordingly, the Panel finds each of the disputed domain names is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, respondent bears burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to [respondent] 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) ha[s] been commonly known by the domain name, even if [respondent] ha[s] 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.
The Panel finds that although Complainant’s argument on this element is conclusory, it has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
The Complaint contains factual assertions regarding the sequence of events leading to the registration and use of the domain names, specifically describing a 2004 meeting between representatives of Complainant and Respondent’s president at which Respondent learned of Complainant’s SHIPWORKS software and subsequently purchased a copy. These assertions are important because Respondent’s registration of the two domain names, in February 2006, predates Complainant’s trademark registrations, the earlier of which did not issue until later that year. However, unsupported statements of a party’s representative as to factual matters easily established by documentary evidence (particularly those that are not within the representative’s personal knowledge) are not evidence and the Panel gives them little or no weight.
The Panel does give weight to Complainant’s documentary evidence – a receipt for Respondent’s 2004 purchase of a copy of Complainant’s SHIPWORKS software, which both uses the SHIPWORKS trademark and bears the name “Interapptive.” In the Panel’s view, the evidence of Respondent’s purchase of the software establishes that Respondent had, at least, knowledge of the SHIPWORKS mark and the “Interapptive” name as well as the nature of the goods and services offered under the mark and name. The copies of the pages from Respondent’s website corresponding to the domain names establish that Respondent uses the domain names for competing goods and services. Such a use is not a bona fide offering and therefore the Panel finds that Complainant has made a prima facie showing as to the example in paragraph 4(c)(i) of the Policy.
There is no evidence that Respondent is or has been known by either of the disputed domain names as in the example in paragraph 4(c)(ii), and there is no evidence that Respondent is making a legitimate noncommercial or fair use of either domain name as in the example in paragraph 4(c)(iii). As noted above, the domain names resolve to websites that are very similar to Respondent’s “www.zfirm.com” website. The websites can not be considered as “noncommercial” and appear to be used in a manner that would not be a “fair use” under principles of United States trademark law.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in each of the disputed domain names.
C. Registered and Used in Bad Faith
Complainant must establish that the domain names were registered and are being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site 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] web site or location or a product or service on [respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
The Panel has already concluded that Respondent has no rights or legitimate interests in the domain names and that the use of the domain names was not in connection with a bona fide offering of goods or services. Based on the documentary evidence presented and drawing reasonable inferences from Respondent’s failure to respond, the Panel concludes that Respondent registered both domain names with knowledge of Complainant’s rights and in order to attract visitors by creating confusion between Complainant’s marks and Respondent’s websites.
Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <intrapptive.com> and <shipwrks.com> be transferred to Complainant.
Debra J. Stanek
Dated: September 8, 2010