WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VMware, Inc. v. DomainsByProxy.com/ www.NAOCELS.com

Case No. D2010-0950

1. The Parties

The Complainant is VMware, Inc. of Palo Alto, California, United States of America, represented by Melbourne IT DBS Inc., United States of America.

The Respondent is DomainsByProxy.com/ www.NAOCELS.com of Scottsdale, Arizona, United States of America and Vancouver, British Columbia, Canada, respectively.

2. The Domain Name and Registrar

The disputed domain name <vmwarelab.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2010. On June 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 26, 2010 and June 30, 2010. The Center verified that the Complaint together with the amended 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 June 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 21, 2010.

The Center appointed John Swinson as the sole panelist in this matter on July 28, 2010. 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 is an international organisation based in the United States of America (“U.S.A.”). The Complainant provides infrastructure software solutions in the area of cloud computing. The Complainant offers a number of specialised products including “VMware vSphere” and “VMware vCenter Lab Manager 4”. The Complainant owns registered trade marks for VMWARE.

The disputed domain name was registered on September 3, 2007. The Complainant has stated and provided evidence that the disputed domain name was being used as a pay-per-click landing page. On July 30, 2010, the panelist viewed the website at the disputed domain name and found a blog website is titled “VMWare Lab Review” with blog entries all dated July 12, 2010 about the Complainant’s products.

No information was provided about DomainsByProxy.com, although the Panel understands them to be an organisation that provides domain privacy protection services. Furthermore, no information was provided about “www.NAOCELS.com”. Together, both these parties shall be referred to as “the Respondent”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant is a global leader in cloud infrastructure, delivering customer proven virtualisation infrastructure software solutions that significantly reduce IT complexity. The Complainant has offices in the United States., Canada, Europe, Asia Pacific and the Middle East, selling its products through distributors, resellers, system vendors and integrators and through direct sales. The Complainant has more than 170,000 customers across the world, with 2009 revenues of USD 2 billion.

The Complainant is the owner of the following registered trade marks for VMWARE:

- Trade Mark Registration number 2491236 (U.S.A.), filed on April 7, 1999;

- Trade Mark Registration number 001333178 (Community), filed on October 5, 1999; and

- Trade Mark Registration number 5159706 (China), filed February 15, 2006.

The disputed domain name includes the Complainant’s registered trade mark as well as the generic term “lab”, which also refers to the product/service owned by the Complainant, “VMware vCenter Lab Manager 4”. The Complainant submits that “[i]t has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question” (Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 and Eauto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104). The disputed domain name is virtually identical to confusingly similar with the Complainant’s registered trade marks.

There is no evidence that the Respondent owns any registered trade marks incorporating the word “vmware”, nor does it provide similar goods or services to that of the Complainant. There is no evidence that the Respondent uses the name as a company name or has any other legal right to the name “vmware” or “vmwarelab”. The Respondent is not a licensee or an authorised representative or partner of the Complainant to register or sell domain names incorporating the Complainant’s marks.

The Respondent is not using the website in connection with any bona fide offering of goods or services; instead the Respondent has intentionally chosen a domain name based on a registered trade mark in order to sell the domain name (as shown on the landing page of the corresponding website). It is obvious that the Respondent is trying to generate revenue by using the Complainant’s trade mark. The mere registration of the disputed domain name does not give the owner a right or legitimate interest in respect of that domain name; there must be something more.

The brand VMWARE has been in use since 1998 and has been protected by a registered trade mark in the United States since 1999. The Respondent’s bad faith can be shown by the Respondent registering the domain name after 1999 (registration of the trade mark) and 1998 (registration of the Complainant’s domain name “www.vmware.com”). The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the website. This has been shown by the Respondent operating a “click through” website at a domain name corresponding to the Complainant’s registered trade mark, VMWARE with the addition of “lab” and providing links to another website selling intimate apparel, “www.vmware.cn” to take advantage of the Complainant’s well known mark and to achieve a wrongful and competitive advantage.

Furthermore, although the Respondent was made aware of the infringement on the Complainant’s trade mark rights, the Respondent ignored the request to cease use of the disputed domain name and continued to offer the disputed domain name for sale. It is clear that the Respondent registered the disputed domain name in bad faith for monetary gain and for the purpose of selling it. The offering for sale of a domain name, even to a third party, supports bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, a complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied:

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

(ii) the 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.

The onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of registered trade marks for VMWARE. For the Complainant to succeed on this element, it must show that “vmwarelab” is confusingly similar to VMWARE trademark. (It is well established that the suffix “.com” can be ignored for this purpose.)

It is noted that one of the Complainant’s VMWARE products includes the term “lab” as part of its name (i.e., “VMware vCenter Lab Manager”) and that the Complainant uses the term “vmware LABS” in its marketing for its suite of products. See <http://labs.vmware.com/>.

In prior UDRP panel decisions, it has been found that a domain name comprising the trade mark with the addition of a generic word can still be confusingly similar to a registered trade mark. See, for example, Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 and Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530. In this case, the word “lab” is a commonly used term in the software business.

The Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

Accordingly the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name.

The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

At no time does it appear that the Respondent was using or preparing to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant has not licensed or otherwise authorised the Respondent to use the VMWARE trade mark.

The Respondent does not appear to be commonly known by the disputed domain name.

It appears that, currently, the Respondent may be attempting to make a legitimate noncommercial use of the disputed domain name by operating a noncommercial blog to review the Complainant’s products. However, that blog was established only days after the Respondent received the Complaint in these proceedings. Prior to that, the Respondent was operating a pay-per-click landing page that traded off the Complainant’s reputation. In effect, the quick change of content on the website at the disputed domain name could be taken as an admission by the Respondent that the prior website was not bona fide.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and as the Respondent did not submit a response, it has not rebutted the prima facie case established by the Complainant.

Accordingly, on the evidence available to it, the Panel finds that the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several ways that, if found by the Panel to be present, shall be evidence of the use and registration of the domain name in bad faith.

The Complainant contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Panel finds that, based on the pay-per-click website included in the Complaint, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at disputed domain name by creating a likelihood of confusion between the disputed domain name and the Complainant’s VMWARE trade mark.

Furthermore, the disputed domain name has been offered for sale. It is noted that offering domain names for the sale to the public is not always evidence of bad faith on its own; however, as argued by the Complainant, this does not give the right to sell domain names that are identical or confusingly similar to trade marks of others without their consent (Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066).

In these circumstances, the Panel finds that offering to sell the disputed domain name is also evidence of bad faith.

Accordingly, on the evidence available to it, the Panel finds that the third element has been met.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <vmwarelab.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: August 8, 2010