DECISION

DSN Software, Inc. v. Fishka CO. a/k/a Vitaliy Ribalchenko

Claim Number:  FA0306000161566

PARTIES

Complainant is DSN Software, Inc., Centralia, WA (“Complainant”) represented by Martin L. Laurence.  Respondent is Vitaliy Ribalchenko Fishka CO. a/k/a Vitaliy Ribalchenko, Denver, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dsnsoftware.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 4, 2003; the Forum received a hard copy of the Complaint on June 6, 2003.

On June 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <dsnsoftware.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 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@ dsnsoftware.com by e-mail.

On June 13, 2003, Respondent submitted an email which did not comply with ¶ 5 of the Rules of Procedure and did not advance any substantive arguments upon which relief could be granted. 

Having received no formal 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 July 11, 2003,  pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <dsnsoftware.com> domain name is confusingly similar to Complainant’s DSN mark.

2. Respondent does not have any rights or legitimate interests in the <dsnsoftware.com> domain name.

3. Respondent registered and used the <dsnsoftware.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds multiple registrations for the DSN mark on the Principal Register including U.S. Patent and Trademark Office Reg. No. 2,259,275 registered on July 6, 1999 and Reg. No. 2,332,469 registered on March 21, 2000.

Complainant has been using the DSN mark, with or without various suffixes, for its computer products and services including computer programs, systems and hardware since July 1, 1989. 

Respondent registered the  <dsnsoftware.com> domain name on March 21, 2003.  Respondent is using the <dsnsoftware.com> domain name to sell search engine placements for $9,99 (presumably $9.99) and advertises itself as a resource for promoting websites. 

On the website assoicated with the disputed domain name, Respondent promotes itself as a search engine placement service.  In addition, Respondent identifies itself as DSN Software.

In an informal submission, Respondent recognized that Complainant has registered the DSN mark and admitted that it will have to get a new domain name.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the DSN mark through registration with the United States Patent and Trademark Office and through continuous use in commerce.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

The <dsnsoftware.com> domain name is confusingly similar to Complainant’s DSN mark.  Respondent’s addition of the generic terms, “software” and “com” does not sufficiently change the domain name so as to  distinguish it from Complainant’s mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also  Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that Respondent and [Complainant] operate within the same industry”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not submit a formal Response in this proceeding.  In an informal submission to the Panel, Respondent did not contest Complainant’s allegations.  In fact, Respondent admitted that it would need to get a new domain name because Complainant had registered the DSN mark.  Thus, Respondent’s admission in its informal submission is evidence that it lacks legitimate interests or rights in the disputed domain name.  See Taco Bell Corp. v. Tango Bella, D2000-1229 (WIPO Dec. 12, 2000) (transferring the domain name where Respondent agreed that it had no rights in the domain name); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

There is no evidence that Respondent is commonly known by the <dsnsoftware.com> domain name.  The name given in the WHOIS contact information for the disputed domain name supports the Panel’s reasonable inference that Respondent is not commonly known by the <dsnsoftware.com> domain name.  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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent did not use the <dsnsoftware.com> domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  Respondent is taking advantage of Complainant’s mark by attracting Internet users who are searching for computer related products and services to its site by using the DSN mark.  At the website associated with the disputed domain name, Respondent is charging consumers $9.99 for its search engine placement services, which are similar to services offered by Complainant, but are unrelated to Complainant.  Thus, the Panel finds that Respondent’s use of Complainant’s mark to promote a commercial website that is unrelated to Complainant does not establish a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii).  See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, in hopes of attracting Complainant’s customers, thus finding no rights or legitimate interests); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with   Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is trying to attract Internet users to the <dsnsoftware.com> domain name by  creating a likelihood of confusion with Complainant’s mark as to the source or sponsorship of Respondent’s website.  Respondent is using Complainant’s mark to appear to be offering services that are similar to services offered by Complainant.  In addition, Respondent is commercially benefiting from the unauthorized use of Complainant’s mark when it charges $9.99 for its services.  Thus, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Complainant having established all three elements required under ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <dsnsoftware.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  July 25, 2003

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