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Generic Top Level Domain Name (gTLD) Decisions |
SAS Institute Inc. v. ALU a/k/a J. Barein
Claim Number: FA0209000126631
PARTIES
Complainant is SAS Institute Inc., Cary, NC (“Complainant”) represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC. Respondent is ALU and J. Barein, Silver Spring, MD
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at issue are <sasinstitute.net> and <sasinstitute.org>, registered with Register.com.
PANEL
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge has no
known conflict in
serving as Panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on September 27, 2002;
the Forum
received a hard copy of the Complaint on September 30, 2002.
On September 30, 2002, Register.com
confirmed by e-mail to the Forum that the domain names <sasinstitute.net>
and <sasinstitute.org>
are registered with Register.com and that the Respondent is the current
registrant of the names. Register.com
has verified that Respondent is bound by the Register.com registration
agreement and has thereby agreed to resolve domain-name
disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On September 30, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of October 21, 2002 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@sasinstitute.net
and postmaster@sasinstitute.org by e-mail.
A timely Response was received and
determined to be complete on October 21, 2002.
On October 28,
2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant
was founded in 1976 and has since that time continually used the SAS mark to
identify its computer software-related products
and services. Further, since as early as 1976, Complainant
has used the mark SAS INSTITUTE in connection with computer training
manuals. Today, Complainant is the
largest privately owned software company in the world and serves more than
38,000 business, government and
university sites in 119 countries. The SAS INSTITUTE and SAS marks are
recognized and identified worldwide to identify excellent software solutions,
software consulting
services, and software performance support. Complainant’s products and services are
advertised over the Internet via a website hosted at the address
<sas.com>. Complainant has
expended considerable time and resources in promoting its SAS INSTITUTE and SAS
marks and enjoys tremendous goodwill
and recognition in these marks. Complainant registered its SAS INSTITUTE
mark with the U.S. Patent & Trademark Office under Reg. No. 1,263,595 on January
10,
1984. It also has numerous registered
SAS trademarks.
2.
Respondent
registered the disputed domain names on July 14, 2002.
3.
The
disputed domain names are identical and confusingly similar to Complainant’s
marks. An addition of a top-level
domain does not relieve the infringement of a trademark. Complainant has demonstrated the
requirements of Policy ¶ 4(a)(i).
4.
Respondent
has not made demonstrable preparations to use the disputed domain names in
connection with any bona fide offering of goods
or services. Respondent is not commonly known by the
disputed domain names. Respondent is
disrupting and preventing Complainant from conducting its business. Thus, Respondent does not have rights or a
legitimate interest in the disputed domain names. Complainant has demonstrated the requirements of Policy ¶
4(a)(ii).
5.
Respondent
has registered the disputed domain names in bad faith. Paragraph 4(b) of the Policy sets forth a
non-exclusive list of factors for determining bad faith. Respondent’s conduct with respect to the
domain names indicates that Respondent has registered the domain names
primarily for the
purpose of selling the domain name registrations for a
profit. At the time Respondent
registered the domain names (i.e.,
July 14, 2002), Respondent was on constructive notice of Complainant’s rights
in the SAS INSTITUTE mark by virtue of Complainant’s
incontestable U.S.
trademark registration for that mark.
Further, as of that date, Respondent and/or a party reasonably believed
to be affiliated with Respondent had been served with a Complaint
under the
usTLD Dispute Resolution Policy regarding the bad faith registration of the
domain name <sasinstitute.us>. See SAS
Inst., Inc. v. Farzad Bahreini, FA 115038 (Nat. Arb. Forum Aug. 28,
2002). In that case, a party identified as Farzad Bahreini located,
as Respondent is, in Silver Springs, Maryland, and with a telephone and fax
number
identical to that of Respondent, had registered the domain name
<sasinstitute.us> and had posted a website inviting bids for
that domain
name registration. Mr. Bahreini was
served with a Complaint under the usTLD Policy on July 8, 2002, six days prior
to the date on which Respondent registered
the disputed domain names. Thus, Respondent had actual notice and the
registration of the disputed domain names by Respondent is part of a pattern of
conduct
seeking to benefit from the valuable reputation and goodwill of
Complainant’s SAS INSTITUTE and SAS trademarks.
6.
Respondent’s
use of Complainant’s entire mark in the domain names serves as a further
indication of bad faith. The use by
Respondent of Complainant’s entire mark makes it difficult to infer a
legitimate use of the domain names by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO Mar. 10,
2000), Complainant filed a WIPO complaint against the registrant of the domain
name <cellularonechina.com>
because the domain name included
Complainant’s entire trademark. In light of Cellular One’s trademark
registrations and applications,
“it is not possible to conceive of a plausible
circumstance in which [r]espondent could legitimately use the domain
name.” Thus, Complainant has
demonstrated the requirements of Policy ¶ 4(a)(iii).
B. Respondent
1.
Complainant
is only using <sas.com> in the Internet and is not directly using
<sasinstitute> or <sasinstitute.com>
to promote its products and
services over the Internet.
<sasinstitute.com> only resolves into <sas.com>, and in
<sas.com> there is no mention of <sasinstitute>.
2.
Complainant’s
contention that the domain names are legally equivalent and confusingly similar
at numerous times has been rejected
by Panels applying the Policy. The addition of a “.net” or “.org” is not
always the same as a “.com” name.
Therefore, Complainant’s allegation that Respondent’s domain names are
each identical to Complainant’s SAS INSTITUTE service mark
cannot be accepted.
3.
Respondent
is in the planning stage at this time and intends to use the registered names
as educational divisions of ALU to offer
correspondence courses in tools of
statistical analysis. Complainant’s
product is only one kind of the general statistical analysis tools. Respondent argues that general terms cannot
be monopolized by one company.
4.
It is not
true that by registering the disputed domain names Respondent has made it more
difficult for consumers to find information
on the Internet about Complainant
because anyone familiar with Complainant’s products will naturally use
<sas.com> and will
be instructed by Complainant to use <sas.com>,
which is Complainant’s only website.
Even if they want to use <sasinstitute> name, “.com” is always the
first choice for any prospective customer, which is already
owned by
Complainant.
5.
Respondent
has not advertised and has made no attempt to sell the disputed domain name
registrations and has no intention of selling
its rights in the names.
6.
Respondent
has made some steps in preparations to use the disputed domain names to offer
correspondence classes and the domain names
will resolve to a website in the
future. Respondent asserts that no one
company should be allowed to monopolize the term “Statistical Analysis
Systems.” The same way that no one
company can monopolize “Historical Analysis Systems” or “Economic Analysis
Systems.”
FINDINGS AND CONCLUSIONS
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
instructs this Panel to “decide a complaint
on the basis of the statements and
documents submitted 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 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
There can be no doubt but that the
disputed domain names are confusingly similar and, indeed, identical to
Complainant’s registered
marks and the Panel so finds. The generic top-level domain (“gTLD”)
customarily is disregarded in UDRP cases involving gTLDs such as “.com” and
“.net.” See Princeton Linear Assoc., Inc.
v. Copland o/b/o LAN Solutions, Inc., FA 102811 (Nat. Arb. Forum
Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain name is not a
factor, and hence to be
ignored, when determining whether the domain name is
identical to a mark in which Complainant has asserted rights).
Of particular interest, in this
proceeding with respect to this issue is the direct precedent of SAS
Inst., Inc. v. Farzad Bahreini, FA 115038 (Nat. Arb. Forum Aug. 26,
2002)[1]
(determining the domain name <sasinstitute.us> to be identical to
Complainant’s SAS family of marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, a
Respondent may be found to have rights and a legitimate interest in a disputed
domain name by
demonstrating, without limitation, any of the following factors:
(i)
before any
notice to you of the dispute, your 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)
you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no
trademark or service mark rights; or
(iii)
you are
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.
Clearly, paragraph (ii) is not applicable
here. However, Respondent apparently
claims it falls within paragraphs (i) and (iii), because it proposes it is
planning to use the disputed
domain names “. . . as educational divisions of
ALU to offer correspondence courses in tools of statistical analysis.”
There is no evidence in the record to
support this assertion. It has been
held that a Respondent’s “unsupported, self-serving allegations alone are
insufficient to establish that [the] Respondent
has rights or legitimate interests
in respect to the domain name at issue.”
Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat.
Arb. Forum Feb. 27, 2002) (finding Respondent’s assertion that she registered
the domain name <foxstudios.biz>
in order to get a website address for
her planned dance studios, without evidentiary support, was insufficient to
establish that
she had rights or interests in respect to the domain name at
issue); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (finding that when Respondent declares its intent to develop a
website, “[Policy ¶] 4(c)(i) requires
Respondent to show 1) ‘demonstrable’
evidence of such preparations to use the domain name, and 2) that such
preparations were undertaken
‘before any notice to [Respondent] of the
dispute’”).
Moreover, it has been held that the
registration of an infringing domain name in order to opportunistically trade
on the goodwill
of Complainant’s mark does not constitute a bona fide offering
of goods or services, nor does it represent a legitimate noncommercial
or fair
use of the domain name. See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by
using Complainant’s trademarks); see
also Kosmea Pty Ltd. v. Krpan,
D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where
Respondent has an intention to divert consumers of Complainant’s
products to
Respondent’s site by using Complainant’s mark).
The Panel finds and concludes that
Respondent does not have rights or a legitimate interest in the disputed domain
names.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets forth
certain circumstances, without limitation, that shall be evidence of
registration and use
of a domain name in bad faith. Subparagraph (iv) of Paragraph 4(b) provides:
[B]y using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
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 your website or location or of a product or service on your
website or location.
The words “source, sponsorship,
affiliation, or endorsement” are particularly apt here. Inevitably, the Panel believes that
consumers would conclude that the domain names in issue were endorsed and
sponsored by Complainant.
In addition to the demonstration of bad
faith by the application of subparagraph (iv) of Section 4(b) of the Policy,
there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively. How could it have not been?
The evidence shows that as of July 14,
2002 (the registration date of the disputed domain names here) Respondent
and/or a party reasonably
believed to be affiliated with Respondent had been
served with a Complaint under the usTLD Dispute Resolution Policy regarding the
bad faith registration of the domain name <sasinstitute.us>. See SAS Inst., Inc. v. Farzad
Bahreini, FA115038 (Nat. Arb. Forum Aug. 28, 2002), supra.
The Panel finds and concludes that
Respondent on the date of the registration of the disputed domain names had
actual as well as constructive
notice of Complainant’s family of marks.
In Interstellar Starship Servs., Ltd. v. Epix,
Inc.,
[1999] USCA9 357; 184 F.3d 1107, 1111 (9th Cir. Or. 1999) it was said:
However, ISS became aware of the ‘EPIX’
trademark when it applied for its own registration of ‘EPIX’. Adopting a designation with the knowledge of
its trademark status permits a presumption of intent to deceive. See, Brookfield, 174 F.3d 15 1059 (Official
Airline Guides, Inc. v. Goss[1993] USCA9 3170; , 6 F.3d 1385 (9th Cir. 1993).) In turn, intent to deceive is strong
evidence of a likelihood of confusion. Sleekcraft, 550 F.2d at 354.
Thus, it is found and concluded that the disputed domain
names in issue were registered in bad faith.
The Panel recognizes that “use” in bad
faith also is required in addition to bad faith “registration.”
The Panel heretofore has determined that
Respondent has no rights or legitimate interest in the disputed domain names,
and that he
has registered the names in bad faith. It makes no sense whatsoever to wait until Respondent actually
“uses” the names, when inevitably, if there is such use, it will create
the
confusion described in the Policy.
Under similar circumstances, a
preliminary, mandatory injunction was granted by a federal court requiring the
transfer of a domain
name even though a website had not yet been opened. Green Prods. Co. v. Independence By-Products
Co., 992 F.Supp. 1070 (N.D. Iowa 1997). The threatened harm is
“use.” See Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum, Mar. 19, 2001); see also Hungry Minds, Inc. v. Mall for
Dummies, FA 96635 (Nat. Arb. Forum. Apr. 4, 2001).
In any event, there is “use” because
Respondent has “passively held” the disputed domain names since its
registration despite his
assertion that he is planning to create a
website. See Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that merely holding an infringing domain name without active
use can constitute use in
bad faith); see also DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s
passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii)
of
the Policy); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use
where it is “inconceivable that the Respondent
could make any active use of the disputed domain names without creating
a false impression of association with the Complainant”).
The Panel finds and determines,
accordingly, that Respondent registered and used the disputed domain names in
issue in bad faith.
DECISION
Based on the above findings and
conclusions, and pursuant to Policy ¶ 4(i), it is decided that the disputed
domain names <sasinstitute.net> and <sasinstitute.org>
registered by Respondent ALU shall be, and the same are, TRANSFERRED to
Complainant, SAS Institute, Inc.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated:
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