WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata
Case No. D2012-1338
1. The Parties
The Complainant is Citrix Online LLC of California, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Ramalinga Reddy Sanikommu Venkata of Andhra Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <gototraining.net> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On July 2, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On July 3, 2012, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2012. The Respondent submitted an e-mail communication to the Center on July 27, 2012, which was forwarded to the Panel with the Case File.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 3, 2012. 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
According to information provided by the Complainant, its business enables people to work together over the Internet in order to facilitate efficiency and productivity. The Complainant operates a number of services under trademarks that include GOTOTRAINING, GOTOMYPC, GOTOASSIST, GOTOMEETING and GOTOWEBINAR. The trademark GOTOTRAINING is associated with a service whereby an operator may offer training courses to customers via the Internet.
The Complainant holds the following trademark:
GOTOTRAINING, United States Patent and Trademark Office (USPTO), registration No. 3,807,572, filed March 10, 2008, first use February 16, 2010, registered June 22, 2010, international classes 9, 38, 42.
The Complainant states that it has a pending Indian trademark application for GOTOTRAINING, application No. 2091680.
It is relevant that the Complainant holds other trademarks as follows:
GOTOMYPC, USPTO, registration No. 2,772,971, filed February 28, 2001, first use February 1, 2001, registered October 14, 2003, international class 9;
GOTOASSIST, USPTO, registration No. 3,213,853, filed September 18, 2003, first use October 23, 2003, registered February 27, 2007, international classes 9, 42;
GOTOMEETING, USPTO, registration No. 3,172,020, filed September 18, 2003, first use April 19, 2004, registered November 14, 2006, international classes 9, 38, 42;
GOTOWEBINAR, USPTO, registration No. 3,469,501, filed January 20, 2006, first use June 15, 2006, registered July 15, 2008, international classes 9, 38, 42;
The Complainant states that it has pending Indian trademark applications for, among others, GOTOMYPC (application No. 2,091,681); GOTOASSIST (application No. 1,993,333); GOTOMEETING (application. No. 1,993,334); and GOTOWEBINAR (application No. 2,091,682).
Nothing of substance is known about the Respondent or his business, except for the contact information provided with the registration of the disputed domain name. The disputed domain name was registered on August 5, 2009.
5. Parties’ Contentions
The Complainant has produced copies of registration documents in respect of its trademarks registered at the USPTO as listed in section 4 above. There is no documentation in respect of the trademark applications not yet registered.
The Complainant contends that the disputed domain name wholly incorporates and is confusingly similar to the trademark GOTOTRAINING. The disputed domain name is also confusingly similar to the Complainant’s trademarks GOTOMEETING, GOTOWEBINAR, GOTOMYPC and GOTOASSIST.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no current connection or affiliation with the Complainant and has not been authorised in any way to use the Complainant’s trademark in the disputed domain name. The Respondent’s use of the disputed domain name is in competition with the Complainant. The use creates a false impression of a relationship between the Respondent and the Complainant and is not bona fide or legitimate in the terms of the Policy.
The Complainant further contends that the disputed domain was registered and is being used in bad faith. The Respondent knew of the Complainant’s rights in the GOTOTRAINING trademark; the Respondent’s business is in the area of the Complainant’s business; and the Respondent should have found out about the Complainant’s trademark application by searching the USPTO records online. The Respondent should be deemed to have constructive notice of the Complainant’s trademark rights.
The Respondent claims to be located in India, but targets business in the US, and its website offers a telephone contact in the US. Conversely, the Complainant has a significant presence and business in India, where the Respondent is located.
The Respondent uses the disputed domain name to misdirect Internet traffic to its own website for commercial gain. The Respondent offers online educational services that compete with the Complainant’s products and services and does so by using the Complainant’s trademark in the disputed domain name.
The Respondent, in reply to a letter from the Complainant, invited the Complainant to make a monetary offer for the disputed domain name.
The Complainant has cited a number of previous decisions under the Policy that it considers to be precedent.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply formally to the Complainant’s contentions.
An email dated July 27, 2012 from the Respondent will be taken into account by the Panel and is taken to be a denial of the Complaint. The Respondent said, among other things, that he bought the disputed domain name earlier than the Complainant bought its own trademark; that the Respondent has still to build up his online business on Oracle applications; that the intended business associated with the disputed domain name had not yet started earning and therefore is not causing confusion with the Complainant; and that the Respondent was not using the Complainant’s brand.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the disputed domain name <gototraining.net> is confusingly similar to the trademark GOTOTRAINING in which the Complainant presently has rights within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been licensed or authorised in any way to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you 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 (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 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.”
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
According to correspondence produced in evidence by the Complainant, the Respondent on November 11, 2011 told the Complainant that the website associated with the disputed domain name had been inactive for the past 3 or 4 years. Since the registration date was August 5, 2009, the inference would be that the disputed domain name had not been used at all since its acquisition by the Respondent. Thus, it is not realistically possible for the Respondent to establish, in the terms of paragraph 4(c) of the Policy, that the disputed domain name has been used in connection with any bona fide business, or has been used for a fair or noncommercial purpose. There is no evidence that the Respondent or his business has been commonly know by the disputed domain name or that the Respondent made demonstrable preparations to use the disputed domain name in connection with a bona fide business. The Panel can conceive of no other basis upon which the Respondent could establish rights or legitimate interests.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a respondent in bad faith, namely:
“(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 that 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 web site 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.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found alternatively.
The totality of the evidence indicates that the disputed domain name has not been used for any significant purpose since its acquisition by the Respondent on August 5, 2009. There is no evidence of any intended use of the disputed domain name, or of the Respondent having any business related to the website content. The Respondent’s immediate reply to the Complainant’s cease and desist letter, by inviting an offer to buy, largely negates any possible implication by the Respondent of having a bona fide commitment to the disputed domain name.
The Panel concludes on the balance of probabilities that the Respondent, having registered the disputed domain name, then dressed it with a token but inactive website content in order to create a visible presence on the Internet. In the Panel’s interpretation, that action does not convert a passive holding of a disputed domain name into an active holding. Furthermore, the Respondent’s avoidance of any direct placement of the disputed domain name for sale at a nominated price, and the avoidance of naming a price in reply to a cease and desist letter, do not circumvent the spirit and intent of paragraph 4(b)(i) of the Policy. Without necessarily relying on the provisions of paragraph 4(b) of the Policy, which are without limitation, the Panel finds the cumulative evidence sufficient to conclude that the disputed domain name has been used in bad faith.
In terms of registration, the Respondent acquired the disputed domain name on August 5, 2009. The Complainant’s trademark GOTOTRAINING was granted registration at the USPTO on June 22, 2010, with first use claimed for February 16, 2010 and the application having been filed on March 10, 2008. Thus, the Complainant’s trademark was granted registration after the disputed domain name was registered, but application for the trademark pre-dated the Respondent’s acquisition of the disputed domain name.
The simple dates are not definitive, however. Registration in bad faith may be found where, on the balance of probabilities, it is reasonable to conclude that a Respondent knew or ought to have known that the proposed domain name would conflict with the intellectual properties of another party.
Paragraph 2 of the Policy imposes upon a registrant the requirement, inter alia, that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and further states “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”.
The Respondent could have searched the relevant USPTO trademark application registry and should have found the Complainant’s application in respect of GOTOTRAINING. More pertinently, it is noted that the Complainant held trademarks registered between 2001 and 2006 for constructs commencing in the style GOTO, although contrary to its reference to “the GOTO trademarks”, the Complainant has not produced any evidence of any rights in a trademark GOTO standing alone.
In reaching a decision in terms of bad faith registration, the Panel has reviewed the totality of the evidence, including the long previous existence of the Complainant’s related trademarks GOTOMEETING, GOTOWEBINAR, GOTOMYPC and GOTOASSIST. The Complainant’s application for the trademark GOTOTRAINING was a matter of public record more than 16 months before the Respondent acquired the disputed domain name. The Complainant’s businesses of facilitating web-based assistance, and the training facilitation projected by the Respondent’s holding page, have broad similarities. It may reasonably be expected that the Respondent, in selecting a domain name for a business, would have conducted elementary searches and would have noted the pre-existence and unavailability of <gototraining.com> and the fact that it had been registered by the Complainant in December 2007.
Having regard to all the evidence the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gototraining.net> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: August 17, 2012