WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bombich Software, Inc. v. Domain Manager, Jasper Developments Pty Ltd
Case No. D2013-0417
1. The Parties
Complainant is Bombich Software, Inc. of Longmeadow, Massachusetts, United States of America (“United States” or “US”), represented by Clock Tower Law Group, United States.
Respondent is Domain Manager, Jasper Developments Pty Ltd of Melbourne, Australia.
2. The Domain Name and Registrar
The disputed domain name <carboncopycloner.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On March 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2013, the Registrar transmitted by email 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 the Respondent of the Complaint, and the proceedings commenced on March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Response was filed with the Center on March 26, 2013. On April 2, 2013, Complainant submitted a supplemental filing by email to the Center. On April 4, 2013, Respondent submitted a response to Complainant’s supplemental filing by email to the Center.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on April 8, 2013. 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 various registered trademarks in the United States, including C CARBON COPY CLONER [logo] US registered trademark No. 4089923, registered January 24, 2012 in International Class 009, US classes 21, 23, 26 36 and 38 with a first use in commerce date of January 18, 2002. Complainant has also applied for other trademarks.
The disputed domain name was created on May 22, 2004 and presently displays a parking page with pay-per-click links promoting competitors of Complainant in the field of software backup and hard disk cloning or imaging.1
5. Parties’ Contentions
The Complaint is scant and does little to inform the Panel of Complainant’s business or the legal bases for its arguments. However, according to webpages that the Complaint appends from “www.archive.org”, Complainant has, since 2002, commercialized a software product designed to backup the Mac OS, called “Carbon Copy Cloner.”
i) Identity or Confusingly Similarity
Complainant alleges that the disputed domain name is confusingly similar to Complainant's trademarked product name.
ii) Rights or Legitimate Interests
Complainant’s allegations addressing the second element of paragraph 4(a) of the Policy are so brief that they are reproduced below verbatim:
“There is no evidence of 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.”
“There is no evidence that Respondent as an individual, business, or other organization is commonly known by the domain name.”
“There is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain.”
iii) Registered and Used in Bad Faith.
Complainant alleges that the disputed domain name is being used in bad faith as described under paragraph 4(b)(i) of the Policy. In support, Complainant appends to the Complaint a copy of an email presumably from Respondent, requesting payment of USD 4,995 to transfer the disputed domain name to Complainant.
Complainant also contends that “Respondent registered the Domain more than two years after Complainant acquired trademark rights in the mark” and notes that the disputed domain name is being used in a confusing and misleading way for a parking page which displays ads for Complainant’s competitors
On the basis of the above allegations, Complainant seeks transfer.
While the Response is organized under the usual UDRP tests and headings, the main arguments come down to a single issue: Respondent contends that the Complaint does not establish the existence of common law trademark rights prior to registration of the disputed domain name in 2004.
Significantly, however, Respondent does not contradict the evidence from “www.archive.org” appended to the Complaint, which shows that Complainant has been distributing the Carbon Copy Cloner software product since 2002. Respondent also does not deny the allegations that the disputed domain name is being used to promote Complainant’s competitors.
Respondent argues that the email appended to the Complaint – offering USD 4,995 for transfer of the disputed domain name – is misleading because the Complaint makes no reference to earlier correspondence initiated by Complainant in which Complainant offered USD 150 to acquire the disputed domain name. Thus, Respondent argues that because Respondent’s offer to sell was solicited by Complainant, application of 4(b)(i) of the Policy is unwarranted.
6. Discussion and Findings
A. Supplemental Filings
The Panel has considered the parties’ respective requests to admit supplemental filings in this proceeding. The Panel denies those requests.
Under the UDRP’s summary procedure, each party is entitled as of right to submit only one single pleading. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents.
Complainant’s sole argument for admitting its supplemental Reply is that incorrect and/or misleading information was provided in Respondent’s Response. Though Complainant provides citations to cases holding that these are appropriate grounds for accepting supplemental filings, Complainant does not specifically identify which information was allegedly incorrect or misleading. Instead, it appears that Complainant uses the supplemental pleading to address points that it could have anticipated would be raised in the Response.
For its part, Respondent states no ground to support the Panel’s exercise of discretion to accept Respondent’s supplemental pleading. Respondent’s merely supplemental pleading consists of a point-by-point response to Complainant’s supplemental pleading.
The Panel finds no indication that there are exceptional circumstances, new developments, arguments or evidence that were not available to Complainant before. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (discussing considerations to balance in determining whether exceptional circumstances exist sufficient to admit supplemental filings in light of the Policy’s overriding goal of efficiency), cited in Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd., WIPO Case No. D2011-0005. Since the Panel finds there is no ground to accept Complainant’s supplemental filing, the Panel also rules that there is no need to accept Respondent’s supplemental filing, intended to rebut Complainant’s supplemental filing.
In its discretion and in the interests of due expedition, the Panel feels that the record that already exists without supplemental filings is adequate for purposes of this proceeding.2
B. Substantive Rules
The Panel must render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
C. Identical or Confusingly Similar
While Respondent denies that Complainant has adequate trademark rights, the Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
The parties debate whether Complainant possesses sufficient common law trademark rights which predates the registration of the disputed domain name in 2004.3 In the present circumstances, the Panel can avoid reaching a conclusion on the existence of common law rights under the first element of the UDRP, because Complainant has a trademark registration for C CARBON COPY CLONER logo with the US Patent and Trademark Office. The logo consists of the prominent words “Carbon Copy Cloner” in stylized lettering, with an additional uppercase letter “C” set off to the left of these words. Therefore, the Panel finds that Complainant has trademark rights for the purpose of this proceeding.
UDRP panels usually disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the gTLD suffix, then, it is the Panel’s clear impression that the disputed domain name is confusingly similar to Complainant’s registered trademark.
The Panel concludes, therefore, that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services;
(ii) being commonly known by the disputed domain name; or
(iii) the making of a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established by Complainant and Respondent does not rebut that prima facie case.
The record establishes that the disputed domain name is not being used for a bona fide offering of goods and services; while Complainant has offered evidence that it sold a product with the name “Carbon Copy Cloner” for several years, there is no indication that Respondent’s website at the disputed domain name promotes that product.
Respondent also offers no evidence that Respondent is commonly known by the disputed domain name, consequently the Panel finds that Respondent is not commonly known by the disputed domain name.
The Panel also agrees with Complainant that there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Using click-through links may be evidence of commercial use as stated in a previous UDRP decision: “[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit [. . .] in consideration of directing traffic to [third-party] site[s].” The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082).
The Panel finds that the links displayed on Respondent’s parking page at the disputed domain name are of a commercial nature. The Panel thus finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
The Panel also finds that the Complainant has made out a prima facie case. Respondent has not rebutted Complainant’s prima facie case or credibly proven the existence of any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including passive holding and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The record shows that Respondent registered the disputed domain name two years after Complainant promoted its “Carbon Copy Cloner” software on line as evidenced above under Section 5.A and as reflected in the first of commerce in its trademark registration. The Panel infers in the circumstances of this case that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Registration in bad faith is therefore established.
The record shows that Respondent offered to sell the disputed domain name to Complainant for a sum well above Respondent’s out-of-pocket expenses. Unlike Respondent, the Panel sees little significance to the fact that Complainant’s representative made the first contact.
The Panel infers from the circumstances that Respondent’s counter-offer to sell for USD 4,995 indicates that Respondent registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name for valuable consideration in excess of documented out-of-pocket costs. As a party that apparently does substantial trafficking in domain names, see, e.g., Intersections Inc. v. Jasper Developments Pty Ltd, WIPO Case No. D2009-0795 (“Respondent has been found to have registered and used domain names in bad faith on three previous occasions”; complaint denied for failure to establish bad faith), it would not be unusual to wait to approach the relevant trademark owner or its competitors with an offer to sell. The circumstances are sufficient in the Panel’s view under Policy paragraph 4(b)(i) to constitute further evidence of registration and use in bad faith.
Since the disputed domain name is used to promote third-party businesses in the same field as Complainant, the disputed domain name is being used for direct competition with Complainant. This is frequently deemed to be evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 <carboncopycloner.com> be transferred to Complainant.
Nasser A. Khasawneh
Date: April 25, 2013
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name is connected (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.
2 Having in any case reviewed the supplemental filings, the Panel is not persuaded that the outcome of this proceeding would be different were the Panel to have exercised its discretion to accept the supplemental filings into the record.
3 Both parties debate whether Complainant acquired its trademark rights before registration of the disputed domain name. Complainant’s registration states a first use in commerce date from 2002. However, it is also worth noting that the weight of UDRP authority recognizes that a complainant’s trademark rights are usually sufficient even when those rights are not registered or perfected until after registration of a disputed domain name. See, e.g., WIPO Overview 2.0, paragraph 1.4.