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Generic Top Level Domain Name (gTLD) Decisions |
Serverworks Corporation v. Directname
Claim
Number: FA0302000146929
Complainant is
Serverworks Corporation, Santa Clara, CA, USA (“Complainant”) represented
by Gary J. Nelson, of Christie Parker & Hale LLP. Respondent
is Directname, Yongin-si Gyeonggi-do, II, KOREA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <serverwork.com>, registered with NetPia.com,
Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 26, 2003; the
Forum received a hard copy of the
Complaint on February 26, 2003. The Complaint was submitted in both Korean and
English.
On
February 27, 2003, NetPia.com, Inc. confirmed by e-mail to the Forum that the
domain name <serverwork.com> is registered with NetPia.com, Inc.
and that Respondent is the current registrant of the name. NetPia.com, Inc. has
verified that
Respondent is bound by the NetPia.com, Inc. 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
March 7, 2003, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement
Notification"), setting
a deadline of March 27, 2003 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@serverwork.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.
On
April 1, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John
J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its
responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "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 Respondent.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint
and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <serverwork.com>
domain name is confusingly similar to Complainant’s SERVERWORKS mark.
2. Respondent does not have any rights or
legitimate interests in the <serverwork.com> domain name.
3. Respondent registered and used the <serverwork.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Serverworks Corporation, has used the SERVERWORKS trademark since at least
November 4, 1999. Under this mark, Complainant
provides silicon-based building
blocks that allow its customers to build servers, NAS and SAN storage systems,
networking switches,
routers and workstations. On November 4, 1999, Complainant
filed a trademark application with the U.S. Patent and Trademark Office
(“USPTO”) for the SERVERWORKS mark (U.S. App. No. 75/841,146). It is relevant
to note that Broadcom Corporation is the parent company
of Complainant.
Respondent,
Directname, registered the <serverwork.com> domain name on August
23, 2002, and is not licensed or authorized to use Complainant’s SERVERWORKS
mark for any purpose. On February
5, 2003, Respondent solicited Broadcom
Corporation with an offer to sell its domain name registration for $540, noting
that it thought
that “this deal is good chance for you or your company.” On
February 24, 2003, Respondent again e-mailed Complainant’s parent corporation,
informing Broadcom that a third party had made an offer for the disputed domain
name for $350 while inviting Broadcom to respond
with a higher offer.
Paragraph 15(a)
of 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) 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.
Complainant has established rights in the SERVERWORKS mark through
proof of application for a trademark with the USPTO, as well as
through use of
the mark in commerce. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that Complainant's trademark or service
mark be registered
by a government authority or agency for such rights to
exist. Rights in the mark can be
established by pending trademark applications); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which Respondent
operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <serverwork.com>
domain name is confusingly similar to Complainant’s SERVERWORKS mark. The
only difference between Complainant’s mark and Respondent’s
domain name is the
elimination of the letter “s” from the end of Complainant’s mark, which does
not change the overall impression
of the mark. See Universal City
Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from
Complainant’s UNIVERSAL STUDIOS STORE mark did not change
the overall
impression of the mark and thus made the disputed domain name confusingly
similar to it); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain
name does not significantly change the overall impression of the mark).
Accordingly, the
Panel finds that the <serverwork.com> domain name is confusingly similar to Complainant’s SERVERWORKS mark
under Policy ¶ 4(a)(i).
Complainant can
meet its burden under Policy ¶ 4(a)(ii) by demonstrating to the Panel that
Respondent would not have been able to
rely upon the safe harbors listed for
domain name Registrants in Policy ¶¶ 4(c)(i)-(iii). As Respondent submitted no
response to
the Complaint, such a showing results in a finding for Complainant
on this element. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has
no rights or legitimate interests
in respect of the domain name it is incumbent
on Respondent to come forward with concrete evidence rebutting this assertion
because
this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with
respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate
interests in the domain name).
Half a year after registering the <serverwork.com> domain name, Respondent solicited
Complainant’s parent corporation with an offer to sell the domain name
registration for $540. During
the months between Respondent’s registration of
the domain name and its unsolicited sale offer, Respondent did nothing to
develop
a website at the disputed domain name. The Panel infers that Respondent
registered the disputed domain name because it knew of its
value to Complainant,
and intended to profit from its sale of the registration to Complainant. This
type of activity is not a bona
fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the
domain name
pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v.
Domain 4 Sale & Co.,
FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites
that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where Respondent registered
the domain name
with the intention of selling its rights).
Nothing before the Panel indicates that Respondent was ever “commonly
known by” the name <serverwork.com>. What is clear is that Respondent has
not used the domain name, and has done nothing with its registration other than
to offer it
for sale. As such, the Panel finds that Policy ¶ 4(c)(ii) does not
apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Respondent did not respond to the Complaint. The Panel chooses to view
this lack of response as evidence that it lacks rights and
legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no
legitimate interest in the domain
names); see also BIC Deutschland GmbH
& Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<serverwork.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s two separate and unsolicited offers to sell its infringing
domain name registration to Complainant are evidence that
Respondent’s primary
purpose in registering the domain name was sale of that registration to
Complainant. Respondent’s failure to
develop a website further bolsters this
inference. As Respondent’s asking price for the domain name ranged from $350 to
$540, despite
the fact that it had not made any use of the domain name, the
Panel concludes that these prices reflect an amount “in excess of”
Respondent’s
“out-of-pocket costs directly related to the domain name.” This evidences bad
faith use and registration of the domain
name pursuant to Policy ¶ 4(b)(i). See
Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000)
(finding bad faith where Respondent made no use of the domain names except to
offer them for sale
to Complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to
Complainant amounts to a use of the domain name in bad faith).
The Panel thus
finds that Respondent registered and used the <serverwork.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <serverwork.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
April 14, 2003
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