WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon
Case No. D2016-2514
1. The Parties
The Complainant is Caldsoft Way3D Sistemas Eireli EPP of Santa Catarina, Brazil, represented by Gusmão & Labrunie Advogados, Brazil.
The Respondent is JInsoo Yoon of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <caldsoft.com> is registered with DropCatch.com 1028 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2016 and December 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2017.
The Center appointed Steven Fox as the sole panelist in this matter on January 19, 2017. 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 has used the first word of its company name, Caldsoft, as a trademark beginning in 2000 for services related to computers and software. The company name has changed through the years. For all but eight months–April 04, 2009 until December 11, 2009–Caldsoft was the first word. On October 20, 2004, prior to the interval during which Caldsoft was not in the company name, the Complainant filed an application for registration of a composite trademark in the Brazilian Patent and Trademark Office. The trademark application was for CALDSOFT, in lower case, with the initial letter capitalized; and with the word embraced by a curve under the word, reminiscent of a shadow, beginning at the bottom left of the “C”, ending at the upper right of the “T”. The trademark was registered on October 23, 2007, Registration No: 827038887; and is in force until October 23, 2017.
The Complainant registered the domain name of <caldsoft.com.br> on March 20, 2002. The Complainant also registered the disputed domain name, <caldsoft.com>; but inadvertently did not renew the registration.
The Respondent thereafter registered the disputed domain name, <caldsoft.com>, on August 13, 2016; but has no content posted there. The Respondent posted links purportedly offering cracked versions of the Complainant’s software, the software of others, and instructions on downloading “windows” [sic].
The Panel visited the site on January 23, 2017, and found only a statement that “This Domain Name is Possibly For Sale” and instructions on how to submit an offer to buy the disputed domain name.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is identical to the CALDSOFT trademark because the disputed domain name consists only of the same word plus the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant asserts it has never authorized the Respondent to use or to register the disputed domain name nor licensed the Respondent to use the CALDSOFT trademark. The Complainant contends the Respondent does not have rights or legitimate interests regarding the disputed domain name because the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because the disputed domain name is listed for sale on the website of a domain name broker, “www.sedo.com”. The Complainant listed six prior UDRP proceedings against the Respondent as evidence that the Respondent is a serial cybersquatter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A default does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the elements of its complaint. See Paragraph 4(a) of the UDRP.
A. Identical or Confusingly Similar
The Panel finds that the Complainant acquired unregistered trademark rights in the trade name CALDSOFT beginning in 2000 for the purpose of the Policy. The Panel finds that the April 4, 2009 until December 11, 2009 interval during which Caldsoft was not a component of the Complainant’s company name does not act as an abandonment or waiver of rights. The evidence shows the Caldsoft name was the predominant commercial impression of a valid trademark registration during the intermezzo. Moreover, the evidence shows the Complainant used the name Caldsoft on its “www.caldsoft.com.br” website as a trademark during that time. Finally, the Panel finds that the Complainant has registered trademark rights in CALDSOFT as set out under section 4 of this Decision.
The disputed domain name is identical to the alphanumeric component of the registered trademark. It is also identical to the Complainant’s trade name and the first word of the Complainant’s company name.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The uncontested evidence is that the only use the Respondent has made of the disputed domain name is to offer it for sale, display pay-per-click links, collect whatever pay-per-click revenue that may meanwhile come its way, and offer cracked versions of the Complainant’s and others’ software. The Respondent offered no evidence that it has ever, let alone currently, been known by the Caldsoft name; nor offered any goods or services under Caldsoft as a trade name or brand name, or otherwise made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
C. Registered and Used in Bad Faith
The Respondent registered and used the disputed domain name in bad faith. The Respondent was first offering cracked versions of the Complainant’s software, not its own goods or services. The Respondent now simply offers the disputed domain name for sale.
The disputed domain name became available for purchase only through an oversight by the Complainant. If the disputed domain name was the Complainant’s primary domain name, the Complainant would likely have renewed it. Companies routinely own many domain names to prevent others from attacking their business and goodwill with identical or confusingly similar domain names. It is reasonable that a company might neglect to renew one or more of the defensively-owned domain names. It can be inferred that the Respondent was aware of the Complainant’s trademark at the time of registration, and bought a lapsed registration under the present circumstances when the public record shows the prior registrant owns multiple domain names with a common component of the trademark of the prior registrant.
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 <caldsoft.com> be transferred to the Complainant.
Date: January 23, 2017