WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brocade Communications Systems, Inc. v. Jose Augustine

Case No. D2017-0008

1. The Parties

The Complainant is Brocade Communications Systems, Inc., of San Jose, California, United States of America (“U.S.”), represented by Edge Law Group, U.S.

The Respondent is Jose Augustine of “Not needed” [sic] California, U.S.

2. The Domain Name and Registrar

The disputed domain name <brocadesoftware.com> (“Domain Name”) 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 January 5, 2017. On January 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the corresponding contact details for the Domain Name to the Center.

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 January 13, 2017. In accordance with the Rules, paragraph 5, the due date for the Respondent to file a Response was February 2, 2017. The Respondent did not submit a response. Accordingly, the Center notified the parties of the Respondent’s default on February 3, 2017.

The Center appointed Marylee Jenkins as the sole panelist in this matter on February 15, 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of numerous trademark registrations for the mark BROCADE in multiple jurisdictions throughout the world, including, for example, Australia, China, Canada, the European Union, Japan, Mexico and the U.S. (individually and collectively the “Complainant’s Mark”). For instance, U.S. Trademark Reg. No. 2,153,602 for the mark BROCADE registered on April 28, 1998 for “computer hardware and software for network communications” in class 9. The Complainant also owns many domain names that incorporate the Complainant’s Mark, including the domain name <brocade.com> (registered on January 2, 1998) along with a corresponding website, that are used by the Complainant to market its computer hardware and software products and services under its BROCADE brand.

The Respondent registered the Domain Name <brocadesoftware.com> on December 2, 2016. There is currently no website accessible at the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is commonly referred to and operating under the Complainant’s Mark and trade name since at least as early as 1995 and is a publicly-traded technology company serving customers globally. The Complainant submits that it is a leading supplier of networking hardware and software, including storage area network (SAN) solutions and Internet Protocol (IP) networking solutions, for businesses and organizations worldwide. The Complainant further alleges that its software products represent a significant and growing percentage of its revenues. The Complainant has submitted evidence of a search for “Brocade Software” using the Google search engine which it alleges that such reflects that no one other than the Complainant offers software under the Complainant’s Mark.

The Complainant states that its customers are private sector and public sector organizations of many types and sizes, including global enterprises that use the Complainant’s products and services as part of their communications infrastructure, and service providers such as telecommunication firms, cable operators, and mobile carriers. As of November 1, 2016, the Complainant states that it has over 4,000 employees with offices across North America, Europe, Asia, and Central and South America and that its 2016 net revenues exceeded USD 2.35 billion.

The Complainant states that it is the owner of the <brocade.com> domain name and that it operates its primary website at this domain name.

Based on the above, the Complainant alleges that it has a worldwide reputation and significant goodwill under the Brocade name and the Complainant’s Mark and that it has obtained numerous technology awards confirming its position as a worldwide technology leader.

The Complainant owns numerous domain names that incorporate the Complainant’s BROCADE name and the Complainant’s Mark. Many of these domain names resolve to the Complainant’s <brocade.com> website and were registered prior to the Respondent’s registration of the Domain Name in this proceeding.

The Complainant alleges that the dominant element of the Domain Name is the term “brocade” which is identical to the Complainant’s Mark, which is owned and used extensively by the Complainant and its authorized resellers and agents in the technology space. The Complainant further alleges that the addition of a generic reference to products (software) sold under the Complainant’s Mark does nothing to distinguish the Domain Name from the Complainant and its products and arguably increases the likelihood of consumer confusion as consumers are likely to believe that the Complainant owns and operates a website at the Domain Name since software is a significant part of the Complainant’s operations. The Complainant therefore concludes that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has senior and extensive rights and that the Respondent’s registration of the Domain Name is without cause and is likely to cause harm to the Complainant and the public.

The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name based on no evidence existing that: (i) the Respondent’s registration of the Domain Name is in connection with a bona fide offering of goods or services; (ii) the Respondent, as an individual, business or other organization, has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; and (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to divert misleadingly consumers or to tarnish the Complainant’s Mark.

The Complainant further alleges that the Respondent registered and is using the Domain Name in bad faith. Particularly, the Complainant alleges the following support a finding of bad faith registration and use of the Domain Name: (i) the fame of the Complainant and the Complainant’s Mark, which strongly suggest the Respondent must have known of the Complainant and the Complainant’s Mark at the time it registered the Domain Name; (ii) The Domain Name is identical to the Complainant’s Mark aside from the non-distinctive TLD suffix and generic product reference; (iii) active steps were undertaken by the Respondent to conceal its identity; and (iv) the manner in which the Respondent uses the Domain Name suggests that the website at the Domain Name is only temporarily unavailable and thus is without legitimate reason for such use. In addition, the Complainant argues that there exists no reasonable basis on which the Respondent might hold rights or legitimate interests in a name that has been in continuous, worldwide use by the Complainant for over 20 years. The Complainant further states that the circumstances and the Respondent’s conduct are arguably fraudulent and are not capable of conferring a right or legitimate interest in the Domain Name to the Respondent.

In summary, the Complainant alleges that the Respondent uses the Domain Name to mislead or with an intent to mislead the public. As the Domain Name is confusingly similar to the Complainant’s Mark, there is a likelihood of confusion presumed and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. The Complainant thus avers that the Respondent intentionally registered the Domain Name in bad faith and without lawful cause.

B. Respondent

The Respondent did not file a response with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domain of the Domain Name shows that it comprises the Complainant’s Mark (i.e., BROCADE) in its entirety along with the word “software” as a suffix. A review of the Complainant’s many trademark registrations used in connection with a variety of goods and services shows that the word “software” is clearly associated with and has described the Complainant’s products and services for over 20 years. In view of the Complainant’s business along with its many registered trademarks and the long-time use thereof, any possible goods or services offered on a website at this Domain Name would suggest or imply that such are authorized by or affiliated with the Complainant. It further suggests that the Respondent had knowledge of the Complainant’s Mark as well as its business, its goods and services, its domain name registrations and its corresponding website, when the Respondent registered the Domain Name.

Based on the submitted evidence and uncontested assertions made by the Complainant, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder’s rights to or legitimate interests in a domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder 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.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making any demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. In addition, no evidence has been presented to suggest that the Complainant has ever allowed or permitted the Respondent to register or use any domain name incorporating the Complainant’s Mark in any fashion. Rather it is apparent that the Complainant had well established rights in the Complainant’s Mark at the time of the Respondent’s registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.

No evidence has been presented that the Respondent is commonly known by the Domain Name or that the Complainant has, at any time, assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s Mark. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Rather, the Panel finds that the Respondent clearly had knowledge of the Complainant’s Mark and its rights therein when registering the Domain Name. This finding is supported by the evidence showing that: (i) the Complainant’s mark BROCADE has a strong reputation and is well known; (ii) the Complainant owns numerous trademark registrations used in connection with a variety of goods and services throughout the world; (iii) the Domain Name comprises the Complainant’s Mark in its entirety along with the word “software” as a suffix, which clearly describes the Complainant’s goods and services; (iv) the Domain Name was registered well after the first use in commerce by the Complainant of its BROCADE mark; and (v) the Complainant owns multiple domain names that include the mark BROCADE, which resolve to a website owned by the Complainant. Along with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Complainant has also asserted and submitted uncontested evidence to show that the Domain Name has previously resolved to a temporary web page and currently does not resolve to any web page. Based on the above, the Panel finds that the Respondent’s actions and inactions constitute passive use or holding of the Domain Name. Additionally, a review of the WhoIs record for the Domain Name shows that the Respondent has provided fictitious contact information in its registration details for the Domain Name (e.g., “Mailing Address: Not needed, Not needed California 94043 US”).

Viewing the submitted evidence and the Complainant’s uncontested assertions in their entirety, the Panel determines that the Respondent’s inactions and actions together result in the finding that the Domain Name was registered and is being used in bad faith. The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <brocadesoftware.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: March 8, 2017