WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ThinkAnalytics Limited, v. Daniel Rosen

Case No. D2011-1158

1. The Parties

Complainant is ThinkAnalytics Limited, of United Kingdom of Great Britain and Northern Ireland, represented by Thorntons Law LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is Daniel Rosen, of United States of America, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <thinkanalytic.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2011. On July 8, 2011, the Center transmitted by email to Tucows Inc.a request for registrar verification in connection with the disputed domain name. On July 11, 2011, Tucows Inc. 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 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 Respondent of the Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Response was filed with the Center on July 29, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on August 5, 2011. 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 has carried on business since 2000 in the United Kingdom and the United States of selling software, printed matter relating to the software and providing consulting services relating to computer software.

Complainant is the owner of United States trademark THINKANALYTICS, Registration Number 2767202, registered September 23, 2003 in relation to goods and services in Classes 9 (computer software etc), 16 (printed matter relating to computer software) and 42 (consultation services in relation to computer software).

Complainant was also the owner of the Community Trade Mark THINKANALYTICS Registration Number 001818756 registered September April 12, 2002 in relation to goods and services in Classes 9 (computer software etc), 16 (printed matter relating to computer software) and 42 (consultation services in relation to computer software). The Community Trade Mark THINKANALYTICS expired for non-renewal on June 12, 2011.

Complainant has owned and operated a website at “www.thinkanalytics.com” since March 21, 2002 from which it promotes goods and services including computer software, and printed matter relating to computer software and consultation services in relation to the computer software.

The disputed domain name “www.thinkanalytic.com” which is the subject of this Complaint was registered by Respondent on April 7, 2009.

5. Parties’ Contentions

A. Complainant

A. 1. Identical or Confusingly Similar

Complainant states that as found in section 4 above, that it is the owner of a trademark registration in the United States of America for the trademark THINKANALYTICS registered in relation to computer software, printed matter relating to computer software and consultation services in relation to the computer software. Complainant has used the trademark THINKANALYTICS in the United Kingdom and the United States since at least as early as 2000 and continues to extensively use the trademark THINKANALYTICS in the United Kingdom and the United States in relation to the goods and services for which it is registered.

Complainant states that the disputed domain name <thinkanalytic.com> which is the subject of the Complaint is confusingly similar to Complainant’s United States trademark. Given the similarities between Complainant’s trademark and the disputed domain name, members of the public may mistakenly believe that the disputed domain name is associated with the goods and services offered by Complainant.

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name <thinkanalytic.com>.

Complainant states that it has owned and operated a website at “www.thinkanalytics.com” since March 21, 2002 from which it promotes goods and services including computer software, printed matter relating to computer software and consultation services in relation to computer software. Complainant's Community Trade Mark which recently expired was registered on April 12, 2002. The Complainant's US trademark was registered on September 23, 2003.

Complainant states that to its reasonable knowledge and belief, Respondent has not registered “ThinkAnalytic” as a trademark in the United States, European Community or in any other jurisdiction and does not have title to use this mark in relation to the goods and services.

Complainant further states that Respondent has no title or license from Complainant to use the disputed domain name which is confusingly similar to its United States trademark for the purpose of promoting Respondent’s own goods and services and there is no relationship between Complainant and Respondent.

Complainant states that to its reasonable knowledge and belief Respondent did not use or prepare to use the disputed domain name or a name similar to the disputed domain name prior to its registration on April 6, 2009 and has therefore not built up goodwill in the disputed domain name <thinkanalytic.com> or the mark "ThinkAnalytic" in its own right.

Complainant further states that to its reasonable knowledge and belief Respondent whether as an individual, business or other organization has not been commonly known as "ThinkAnalytic" and is not making any legitimate noncommercial or fair use of the disputed domain name.

Complainant submits that any use of the name "ThinkAnalytic" in connection with the goods and services related to the actual content of the website hosted at the disputed domain name would constitute trademark infringement.

A.3. Registration in Bad Faith

Complainant states that it has owned and operated the website at “www.thinkanalytics.com” since March 21, 2002 from which it sells and promotes its goods and services including computer software, printed matter relating to computer software and consultation services in relation to computer software.

Complainant's United States trademark THINKANALYTICS was registered on September 23, 2003. Complainant has established considerable goodwill and an international reputation in relation to the "ThinkAnalytics" name and brand and is recognized as a world-leading provider of the goods and services for which the trademark is registered.

The disputed domain name <thinkanalytic.com> was registered by Respondent on April 6, 2009.

A.4. Use in Bad Faith

Complainant submits that the website at the disputed domain name serves no legitimate purpose in terms of communicating information to the public or promoting any actual goods or services offered to the public. Rather, it contains a largely incoherent arrangement of terms and phrases typically used in connection with Complainant's products and services which, in Complainant’s view, are intended to disrupt the business of Complainant.

Complainant further submits that the disputed domain name is so confusingly similar to the disputed domain name belonging to Complainant that website traffic may be diverted from Complainant's own website. Internet users may believe that the website at the disputed domain name belongs to Complainant. They may believe that the website is associated with or endorsed by Complainant.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Respondent, by using the disputed domain name, takes unfair advantage of the goodwill and reputation belonging to Complainant. By using the disputed domain name, Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, affiliation or endorsement of Respondent's website or goods or services.

B. Respondent

B.1. Identical or Confusingly Similar

Respondent states that its business, ThinkAnalytic, is a sole proprietorship that provides statistical consulting services primarily to small market research firms, and as such does not compete with, and has never intended to compete with Complainant's business. Complainant and Respondent conduct business in separate NICE classification classes. Complainant business focuses on Classes 9, 16 and 42, while Respondent focuses on Class 35 (Marketing research and marketing studies).

Respondent further submits that since obtaining the disputed domain name and establishing the website “www.thinkanalytic.com”, Respondent has not received a single email, letter, fax, phone call or any other communication from any person or company noting any confusion with or relation to Complainant's company. This includes receiving no communication from Complainant prior to receipt of the Complaint during the 27 months since the disputed domain name was registered to Respondent.

Respondent states that Complainant has not communicated to Respondent information regarding any instance where such confusion between the businesses has taken place during the 27 months since Respondent registered the disputed domain name <thinkanalytic.com>.

Respondent further submits that contrary to Complainant's claims, it appears that Complainant no longer holds the Community Trade Mark to THINKANALYTICS. According to Complainant's own documentation, this registration expired on 08/08/10. Presumably this would affect Complainant's standing to lodge a complaint.

B.2. No Rights or Legitimate Interests in respect of the Domain Name

Respondent states that it first began business as the sole proprietorship ThinkAnalytic, in April, 2009, 27 months before receiving notice of this dispute and has been conducting business as ThinkAnalytic since then. While not a large business, as it is conducted part-time, currently. Respondent has three clients with net revenues of approximately USD 50,000. Until receiving a copy of the Complaint, Respondent was not aware that Complainant existed.

Respondent states that its clients have known its business as ThinkAnalytic since the inception of their relationship with Respondent. As a small business Respondent has not acquired trademark or service mark rights to the name, “ThinkAnalytic”.

Respondent further states that it has made a fair use of the disputed domain name, solely for fair use business purposes, with no knowledge of much less intent to divert, mislead or tarnish the trademark or service mark of Complainant. As noted above, Respondent's business is in a different Class than that of Complainant, Respondent has never attempted to conduct business in Complainant’s markets, has received no information from any source regarding any instances in which the two companies were confused, and until receipt of the Complaint was unaware that Complainant existed.

B.3. Registration in Bad Faith

Respondent states that it registered the disputed domain name, <thinkanalytic.com>, solely for the purposes of conducting his own business and until receiving Complaint’s cease and desist letter had no knowledge of Complainant. Respondent further states that it operated the website associated with the disputed domain name simply to conduct his own business, with no intent that the disputed domain name be confused with that of Complainant. As noted above, Respondent states that he was unaware of any instance of confusion.

B.4. Used In Bad Faith

Respondent states that it has not engaged in a pattern of conduct indicating intent of obtaining the disputed domain name to sell it or prevent Complainant from reflecting the mark in a corresponding domain name.

Respondent further states that Complainant has failed to present any evidence that the disputed domain name was registered or is being used in bad faith. The only claim Complainant makes to that effect is to state that the very use of the disputed domain name constitutes evidence of intentional had faith, alleging, "By using the disputed domain name, […] Respondent has intentionally attempted to attract for commercial gain [I]nternet users to […] Respondent's website”.

Respondent states that as noted above, Complainant and Respondent are not competitors and Respondent did not register the disputed domain name <thinkanalytic.com> to disrupt Complainant's business.

B.5. Reverse Domain Hijacking

Respondent respectfully asks the Panel to determine if the Complaint was brought with intent to harass Respondent.

Respondent states that Complainant has refused Respondent's multiple offers to discuss resolving the matter, and according to Complainant’s attorney will only discuss the matter if Respondent offers to pay unspecified damages.

Respondent submits that Complainant's communications with Respondent have included personal insults and threats of legal proceedings.

Respondent further states that Complainant has refused offers by Respondent to transfer, freely and at no cost, the disputed domain name, from Respondent to Complainant and to stop doing business as ThinkAnalytic. Respondent submits that Complainant’s conduct indicates that Complainant is using this proceeding for purposes other than obtaining ownership of the disputed domain name. The nature of these purposes is not known to Respondent, but Complainant's use of this procedure for purposes other than obtaining the disputed domain name, combined with the personal attacks on Respondent, constitutes a clear case of harassment.

Respondent states that out of fear of legal actions, it has been forced to temporarily remove the website and inform his clients that the company name may have to be changed, posing significant risk to the existence of Respondent’s business livelihood.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent 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.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of a registered trademark for THINKANALYTICS registered in the United States on September 23, 2003 in relation to computer software, printed matter relating to computer software and consultation services in relation to the computer software. Complainant’s trademark was registered and used in the United States for many years prior to Respondents registration of the disputed domain name <thinkanalytic.com> on April 7, 2009.

The disputed domain name <thinkanalytic.com> incorporates the entirety of Complainant’s trademark THINKANALYTICS with the exception of the letter ”s” and with the addition of the top level domain indicator “.com”. Many UDRP decisions have found that domain names are generally confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, PepsiCo.Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domain names confusingly similar to the complainant’s PEPSI mark); and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Respondent asserted that that there is no evidence of actual confusion arising from content of the website associated with the disputed domain name. Respondent states that since the registration of the disputed domain name it has not received a single email, letter, fax, phone call or any other communication from any person or company noting any confusion with or relation to Complainant's company. Complainant’s evidence showing a landing page associated with the disputed domain name discloses a landing page without a telephone number, fax number or mail address for Respondent. Respondent did not provide any evidence of the landing page associated with the disputed domain name. A search of the Internet Archives Wayback Machine does not disclose any landing pages associated with the disputed domain name. There is no evidence of how long Respondent used a landing page in association with the disputed domain name.

The consensus view of UDRP panelists is that: “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion… Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See, paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”.

The Panel rejects Respondent’s submission based on lack of evidence of actual confusion based on the content of the webpage associated with the disputed domain name for two reasons. Firstly because it is not the consensus test for determining confusing similarity between the disputed domain name and Complainant’s registered trademark and secondly because Respondent’s proof of lack of actual confusion is insufficient even if such a test for determining confusing similarity was an accepted test.

The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to the registered trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use its trademark.

Complainant has been in the business of selling computer software in the United States of America and the United Kingdom since 2000. The computer software is for creating, facilitating, monitoring, planning, analyzing, optimizing, and managing a relationship between an actual or prospective customer and a business entity. Complainant also sells printed matter, namely brochures, white papers, pamphlets and user manuals all related to the particular computer software described in the previous sentence. Complainant also provides consulting services, namely technical assistance and consultation for the computer software that it sells.

Respondent asserts that it is a sole proprietorship carrying on business under the name “ThinkAnalytic”. Respondent asserts that it is in a different business than Complainant. Respondent asserts that its business focuses on providing marketing research and marketing studies to small market research firms.

Respondent further asserts that it was not aware that Complainant existed until it received the Complaint in this case. This assertion infers that Respondent was not aware of Complainant’s United States trademark registration for THINKANALYTICS filed in the United States in 2000 or Complainant’s domain name <thinkanalytics.com> which has a creation date of March 21, 2002.

Complainant has for many years prior to registration of the disputed domain name used its trademark THINKANALYTICS in the format “ThinkAnalytics”. Complainant included as an annex to the Complaint a copy of landing pages associated with Respondent’s disputed domain name. The heading on the landing page is “ThinkAnalytic” with the letters “T” and “A” capitalized. In its Response, Respondent also capitalizes the letters “T” and “A” presenting the name of the sole proprietorship as “ThinkAnalytics”.

As noted above, Respondent asserts that it is in a different business than Complainant. Respondent asserts that its business focuses on providing marketing research and marketing studies to small market research firms.

However on the webpage associated with the disputed domain name Respondent utilizes many terms such as “Predictive Modeling”, “Customer Targeting and Retention” and “Perceptual Mapping/Market Landscape” which are terms associated with Complainant’s computer software and consulting services.

Respondent’s business is located in Sharon MA which is in close proximity to the City of Boston. The Panel’s review of the webpages associated with Complainant’s domain name <thinkanalytics.com> on the Internet Archives Wayback Machine discloses numerous webpages associated with Complainant’s domain name since 2001. As long ago as February 2, 2001 Complainant’s webpage associated with Complainant’s domain name <thinkanalytics.com> disclosed an announcement from Boston“ Product News, thinkAnalytics Introduces Predictive Intelligent Analytics for Customers Relationship Management”.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights and interests in the disputed domain name in responding to the complaint.

Considering that Complainant has been in business in the United States in a substantial manner since the year 2000 and in business in Boston since at least 2001 and having regard to the fact that Respondent’s trade name is used on its website in the same manner that Complainant frequently uses its trademark THINKANALYTICS with only the letters “T” and “A” capitalized and having regard to the fact that the landing pages associated with the disputed domain name incorporate language which is connected to Complainant’s goods and services, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name.

The Panel has considered Respondent’s statement that he had not heard of Complainant or its registered trademark prior to registration of the disputed domain name but finds that such statement inconsistent with the content on the landing pages associated with the disputed domain name outlined above and accepts the evidence based on the written material over evidence based on recollection.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to establish bona fide rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

C. 1. Registered in Bad Faith

Complainant has established that it is the owner of the registered trademark THINKANALYTICS registered in the United States on September 23, 2003 in relation to computer software, printed matter relating to computer software and consultation services in relation to the computer software. Complainant has owned and operated a website at “www.thinkanalytics.com” since March 21, 2002 from which it promotes goods and services including computer software, and printed matter relating to computer software and consultation services in relation to the computer software. Complainant’s registered trademark and domain name<thinkanalytics.com> have received substantial use in the United States, including the Boston area where Respondent is located, since 2000. Respondent registered the disputed domain name <thinkanalytic.com> on April 7, 2009.

As found in Section 5 B. immediately above, Respondent’s trade name was used on the landing pages associated with the disputed domain name in the same manner that Complainant frequently uses its trademark THINKANALYTICS with only the letters “T” and “A” capitalized and the landing pages incorporate language which is connected to Complainant’s goods and services.

The Panel finds that Complainant has established on a balance of probabilities that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

Respondent’s disputed domain name will lead Internet users familiar with Complainant’s trademark or domain name to infer that the website associated with the disputed domain name belonged to Complainant or was sponsored, affiliated or endorsed by Complainant. Respondent’s use of the disputed domain name in connection with a website having a landing page that features the use of the term “ThinkAnalytic” and incorporates language connected to Complainant’s goods and services, will confirm the initial confusion of some visitors.

The Panel finds that Complainant has established on a balance of probabilities that Respondent used the disputed domain name in bad faith to unfairly exploit Complainant’s trademark rights.

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To succeed on an allegation of Reverse Domain Name Hijacking a respondent must show that the complainant knew of respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See, Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.

In view of the Panel’s finding that Complainant has proven each of the three elements set forth in paragraph 4(a) of the Policy the allegation of Reverse Domain Name Hijacking is dismissed.

The onus of proving Reverse Domain Name Hijacking is on Respondent. Respondent’s submissions on Reverse Domain Name Hijacking were based on the content of correspondence between Respondent and Complainant and Respondent and Complainant’s solicitors. Complainant’s solicitor’s letter included a privilege claim. Complainant’s solicitor’s letter also referred to earlier correspondence between Complainant’s solicitor and Respondent which Respondent did not provide to the Panel. Respondent’s submissions relating to Reverse Domain Name Hijacking are also dismissed on the grounds that the evidence presented by Respondent was incomplete and privileged.

Respondent appears to have consented to the cancellation or transfer of the disputed domain name to Complainant in Section IV of the Response entitled Consent to Remedy. Whether or not such apparent consent was genuine, or possibly made in error (at other points in the Response the Respondent appears to request the Panel to deny the remedies requested by the Complainant), it is not dispositive, and in view of Respondent’s allegation of Reverse Domain Name Hijacking, the Panel has in any event provided reasons for its decision.

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 disputed domain name <thinkanalytic.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: August 19, 2011