WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Applied Systems, Inc. v. Atlantic Insurors, Inc
Case No. D2012-2167
1. The Parties
The Complainant is Applied Systems, Inc. of University Park, Illinois, United States of America (“US”), represented by Ethan F. Hayward, US.
The Respondent is Atlantic Insurors, Inc of Fair Lawn, New Jersey, US.
2. The Domain Name and Registrar
The disputed domain name <appliedsystemssucks.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2012. On November 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2012, the Registrar 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 November 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2012. The Response was filed with the Center on December 4, 2012.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 12, 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
Complainant is the owner of registration of the word trademark APPLIED SYSTEMS on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2377187.1
Complainant has registered the domain name <appliedsystems.com>.2
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on October 20, 2011.
There is no evidence on the record of this proceeding of use by Respondent of the disputed domain name, other than in connection with resolving to the Registrar’s standard form parking page.3
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns the registered trademark APPLIED SYSTEMS which is contained in the disputed domain name.
Complainant states, in full, that: “To the best of Complainant’s knowledge, Respondent has no interest in the name ‘Applied Systems’ or any similar mark.”
Complainant argues, in full: “Respondent registered the Disputed Domain Name on or about October 20, 2011, in an attempt to extort a favorable resolution to a business dispute with Complainant. The parties have since severed their relationship. The Disputed Domain name is defamatory and per se tarnishment of Complainant's registered trademark.”
Complainant requests the Panel to direct the Registrar to transfer to the disputed domain name to Complainant.
Respondent argues that Complainant has not described how the disputed domain name creates confusion with respect to a trademark or service [sic] as to which the Complainant has rights.
Respondent states that Complainant has made no plea or offer of evidence to disprove Respondent’s interest in owning the disputed domain name, while the Policy requires that Complainant must prove the presence of each of three elements.
Respondent indicates that it continues to use a management system purchased from Complainant for which it paid Complainant over $250,000 in support fees. Respondent indicates that it did not register the disputed domain name for any of the purposes listed in paragraph 4(b) of the Policy. Respondent indicates that it has not made bad faith use of the disputed domain name. Respondent indicates it has not built a website, made commercial use or exercised any action using the disputed domain name as a means to discredit or injure Complainant’s registered trademark.
Respondent requests the Panel to reject Complainant’s Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. Respondent furnished a timely Response. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the word trademark APPLIED SYSTEMS by reference to registration on the Principal Register of the USPTO (see Factual Background supra). In its Response, Respondent refers to Complainant’s registered trademark and does not contest the validity of that registration. Based on registration, Complainant enjoys a presumption of ownership and validity of its trademark under US law. The Panel finds that Complainant has rights in the trademark APPLIED SYSTEMS.
Complainant has not made any specific arguments directed toward establishing that the disputed domain name is confusingly similar to its trademark, except Complainant has stated that its trademark is contained in the disputed domain name, <appliedsystemssucks.com>. Respondent has noted Complainant’s failure to advance a legal argument in favor of a finding of confusing similarity.
There is considerable precedent under the Policy regarding assessment of confusing similarity regarding trademarks joined with the term “sucks”, including prior determinations by this Panel. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at section 1.3, observes, it is the consensus view among WIPO panelists that generally domain names consisting of a trademark and the pejorative term “sucks” are confusingly similar to the trademark, preferring that assessment of abusive domain name registration and use in this context be undertaken within the criteria of rights or legitimate interests and/or bad faith.
The absence of legal argument on the issue of confusing similarity by Complainant raises a serious question regarding the extent to which the Panel should draw a conclusion based on its unusually limited pleading. Because Complainant fails to establish that Respondent lacks rights or legitimate interests in the disputed domain name, and fails to establish bad faith registration and use by Respondent, rather than explore here the boundaries of acceptable legal argumentation regarding confusing similarity, the Panel will assume that Complainant has established that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The second element in establishing abusive domain name registration and use is showing that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Complainant bears the burden of establishing a prima facie case that Respondent lacks rights or legitimate interests. Respondent may rebut that prima facie case (accord WIPO Overview 2.0, at section 2.1).4 The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Complainant has addressed the question whether Respondent has rights or legitimate interests in the disputed domain name in a cursory manner, stating only that Respondent does not have rights in the “Applied Systems” name or any similar trademark. There are a variety of ways that a respondent may establish rights or legitimate interests in a disputed domain name that do not involve demonstrating rights in a name or demonstrating rights in a similar trademark (such as by demonstrating legitimate noncommercial use or fair use of a disputed domain name).
Complainant has failed to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel determines that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy enumerates a non-exhaustive set of circumstances which may evidence bad faith registration and use: “(i) circumstances indicating that [the respondent has] registered or … 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has) intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [ the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent has made no use of the disputed domain name other than to permit the Registrar to post its standard form parking page at the address of the disputed domain name. Although Complainant has alleged that Respondent registered the disputed domain name in an attempt to extort a favorable resolution to a business dispute with Complainant, Complainant has presented no evidence to support this allegation. Complainant has presented no evidence that Respondent has attempted to sell the disputed domain name to it, or to a third party. There is no evidence that Respondent registered the disputed domain name to prevent Complainant from registering its trademark in a corresponding domain name. There is no evidence that Respondent is a competitor of Complainant and, as such, attempting to disrupt its business. Respondent has not attempted, for commercial gain, to divert Internet users to a website or location by creating confusion with Complainant’s trademark as to source, sponsorship, affiliation or endorsement of Respondent’s website.
There is precedent under the Policy for finding bad faith registration and use of a disputed domain name notwithstanding the absence of actual use by a respondent (so-called “passive holding”) (see WIPO Overview 2.0, section 3.2). Such findings are dependent on the facts and circumstances of each case. In the present proceeding, there is at most a suggestion from Complainant that Respondent is a disgruntled customer, and an acknowledgment from Respondent that it has paid a substantial sum of money to Complainant for some product or service. There is no suggestion that Complainant is the owner of a well-known trademark, or that there is no potential for legitimate use by Respondent of the disputed domain name at some point in the future. The Panel is unwilling to infer from the very limited information provided by Complainant that Respondent registered and is using the disputed domain name with bad faith intent. Registration of a “sucks-formative” domain name is not per se in bad faith.
The Panel determines that Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: December 16, 2012
1 Complainant has referred to its trademark registration and registration number in the Complaint. Complainant has not provided evidence in the form of a certificate of registration or USPTO TESS printout to support this registration. The Panel has verified the existence of the registration at the USPTO website, but the Panel will not provide information to supplement that furnished by Complainant. (Panel visit of December 16, 2012.)
2 Complainant has not provided evidence of registration of the <appliedsystems.com> domain name, but there is a website at <us.appliedsystems.com> that is redirected from the <appliedsystems.com> domain name and using the name "Applied Systems®". (Panel visit of December 16, 2012.)
3 Panel visit of December 16, 2012.
4 The Policy, at paragraph 4(a), provides “In the administrative proceeding, the complainant must prove that each of these three elements are present.”