|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Synaxia Networks Corporation and Synaxia Networks Limited v Koray Kulcu
Claim Number: FA0010000095849
PARTIES
The Complainant is Synaxia Network Corporation and Synaxia Networks Limited, Mountain View, CA, USA ("Complainant") represented by Carole Barrett, Coudert Brothers. The Respondent is Koray Kulcu, Cockeysville, MD, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is siliconserver.com registered with Network Solutions.
PANELIST
On November 29, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 23, 2000; The Forum received a hard copy of the Complaint on October 24, 2000.
On October 23, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name siliconserver.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On October 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@siliconserver.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Panel finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant alleges the following:
On its face, the Respondent's domain name, siliconserver.com, is identical to the Complainants' trademark for its line of servers. Upon seeing the domain name consumers are highly likely to assume a relationship with the Complainants' products. Furthermore, consumers who search the Internet for Complainants' goods and services by using the Complainants' trademark, as a search query will not lead consumers to Complainant’s web site, thus increasing the likelihood of confusion.
In addition to the absence of any relationship between the Complainants and the Respondent, the domain name is currently not inverse mapped to any IP address and does not resolve to any online presence. This fact alone should be persuasive evidence of the Respondent's lack of interest in making any legitimate use of the Domain Name.
Further, the SILICON SERVER mark is a fanciful and invented word. As such, it is not a word that would ordinarily be chosen for a Domain Name unless one was seeking to create the impression of an association with the Complainants.
As stated above, by virtue of the Complainants' use of Silicon Server™, and the Complainants' efforts to publicize that term, ordinary consumers are likely to be confused as to the domain name's association with the Complainants. Hence, any realistic use of the domain name will likely misrepresent an association with the Complainants, resulting in the common law tort of passing off, as well as leading to liability for trademark infringement.
Accordingly, the totality of the Respondent's conduct – registration of a domain name identical to the Complainants' trademark, failure to make any actual use of the domain name or to announce any contemplated uses of the domain name, failure to provide accurate contact information or to update same in a timely manner – evidences that the Respondent has registered a domain name in bad faith and continues to act in bad faith by passively holding the domain name without any actual or planned beneficial use.
B. Respondent has not submitted a response in this matter.
FINDINGS
Founded in 1998, Synaxia Networks Corporation specializes in the manufacturing and sale of computer servers implementing file and web server functions through proprietary hardware. Complainant has used SILICON SERVER as a trademark since 1998. On January 24, 2000, Complainant filed a trademark application with the United States Patent and Trademark Office, serial number 75-899,944.
Respondent, Koray Kulcu, registered the domain name siliconserver.com on January 11, 1999. Respondent has made no apparent use of the domain name and has not demonstrated any intent or preparations to use the domain name.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has demonstrated that it has obtained sufficient rights in its SILICON SERVER mark to maintain an action under the ICANN Policy. The Policy has been interpreted to allow claims based on common law, as well as registered trademarks. See e.g. Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-00400 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainant’s pending service mark application). The evidence demonstrates Continued advertising and promotion of its products and services under the SILICON SERVER mark. In addition, Complainant has filed an application for federal registration of its SILICON SERVER mark. This Panelist finds this evidence sufficient to indicate Complainant’s rights.
The domain name, siliconserver.com is confusingly similar to Complainant’s SILICON SERVER mark. Ignoring the addition of the top-level domain, which is insignificant for the purposes of determining confusing similarity, the domain name at issue is exactly the same as Complainant’s mark. See Martin v. MDD, Inc, AF-0310 (eResolution Oct. 4, 2000) (finding that the domain name <blueridgeknife.com> is identical to Complainant’s registered mark BLUE RIDGE KNIVES).
Therefore, this panelist finds that the first ICANN Policy element has been satisfied. The domain name siliconserver.com is confusingly similar to SILICON SERVER, in which Complainant has rights.
Rights or Legitimate Interests
Respondent has failed to establish any rights or legitimate interest in the domain name siliconserver.com. Without any proof of rights or legitimate interest, the panelist must conclude that Respondent has no such rights. The ICANN Policy Rules direct the panel, in the absence of exceptional circumstances, to draw reasonable inferences from a Respondent’s failure to respond. See ICANN Policy Rules 14(b). There is no reason for the panelist to believe that any exceptional circumstances exist. Therefore, the panelist may, and does infer that if Respondent had any rights or legitimate interest in the domain name siliconserver.com, it would have asserted that right in this forum, and prevented the transfer of the domain name to Complainant.
Therefore, this panelist finds that the second ICANN Policy element has been satisfied. Respondent has no rights or legitimate interest in the domain name siliconserver.com.
Registration and Use in Bad Faith
Several factors point to Respondent’s registration and use of the domain name in bad faith. Respondent’s passive holding of the domain name is evidence of bad faith. Respondent registered the domain name in January 1999. Since that time, over 22 months have passed, and Respondent has not developed any on-line presence or web site associated with the domain name siliconserver.com. Several Panels have held that such passive holding’ of a domain name for an extended period of time is evidence of bad faith registration and use. See The Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).
Respondent’s failure adds to the weight of the evidence indicating bad faith registration and use. See Hewlett-Packard Company v. Greg Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith).
Finally, the striking similarity between Complainant’s mark and Respondent’s domain name indicates that Respondent registered the domain name to trade off Complainant’s goodwill in the SILICON SERVER mark. See Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith where there was no reasonable possibility that Respondent selected the domain name at random; the only reasonable inference being that the domain name was registered to trade off the goodwill of Complainant’s mark).
Therefore, this panelist finds that the third ICANN Policy element has been satisfied. Respondent registered and is using the domain name in bad faith.
DECISION
For the foregoing reasons, this panelist orders that the domain name siliconserver.com shall be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 6, 2000
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2000/1666.html