DECISION

SDForum, Inc. v. Peter Michaelopolous a/k/a Company Require

Claim Number:  FA0407000304364

PARTIES

Complainant is SDForum, Inc. (“Complainant”), represented by Mark S. Warnick of Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304-1050.  Respondent is Peter Michaelopolous a/k/a Company Require (“Respondent”), Unit 1, No. 25 Ekibin Road, Annerley, Queensland, 4073 Australia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sdforum.com>, registered with Direct Information Pvt. Ltd., d/b/a Directi.com.

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 23, 2004; the Forum received a hard copy of the Complaint on July 26, 2004.

On August 3, 2004, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by e-mail to the Forum that the domain name <sdforum.com> is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that Respondent is the current registrant of the name. Direct Information Pvt. Ltd., d/b/a Directi.com has verified that Respondent is bound by the Direct Information Pvt. Ltd., d/b/a Directi.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 August 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 24, 2004 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@sdforum.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 August 30, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <sdforum.com> domain name is identical to Complainant’s SDFORUM mark.

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

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

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

FINDINGS

Complainant, SDForum, Inc., a non-profit organization based in San Jose, California, was created in 1983 as the Software Entrepreneurs Forum.  In 1998, following Complainant’s merger with another California company, Complainant became known as SDForum, Inc. 

Complainant has served the technology community and public by providing an unbiased source of information and expertise for engineers, executives, researchers and venture capitalists, along with an environment for ideas, discussion and collaboration.  Complainant’s membership has grown from twenty-five people in 1983 to more than 1,700 today.  Complainant’s reputation and achievements are recognized both locally and internationally.

Complainant is considered the leading Silicon Valley source of information and education for software professionals and entrepreneurs.  Complainant is committed to education, and generally hosts more than five educational sessions on business and technology trends each week, including technology conferences, panel discussions and showcases on start-up companies.  Over the last twenty years, Complainant’s events have attracted and involved more than 15,000 individual participants, 250 affiliated companies, and ten universities and research institutions.  Complainant’s regularly scheduled gatherings include monthly meetings for its fourteen special interest groups and cover topics such as emerging technology, international markets, venture finance and software engineering management.

Complainant used the <sdforum.com> domain name to direct viewers to its primary website at the <sdforum.org> domain name.  Complainant operated the <sdforum.com> domain name with the assistance of one of its most active members, Mr. Hill.  Due to miscommunication between Complainant and Mr. Hill, the <sdforum.com> domain name registration lapsed in or about September 2003.

Respondent registered the disputed domain name on October 12, 2003.  Respondent has operated this website as a pornography site, which consists exclusively of pictures, content and links to similar websites. 

 

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 SDFORUM mark through registration of its mark with the United States Patent and Trademark Office and continuous use of the mark since at least 1998.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption; 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 <sdforum.com> domain name is identical to Complainant’s SDFORUM mark.  Respondent’s domain name fully incorporates Complainant’s mark and only deviates with the addition of the generic top-level domain (“gTLD”) “.com.”  The addition of “.com” to Complainant’s mark does not distinguish the domain name pursuant to Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant; see also Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com."); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference")

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to contest Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name.  Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”; see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true. 

Additionally, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent.  Respondent’s failure to fulfill its burden means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain name.  See 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; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.

Respondent is not authorized or licensed by Complainant to use the SDFORUM mark in the domain name, and no evidence before the Panel suggests Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See 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") see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question.

Respondent’s disputed domain name is identical to Complainant’s mark and is used to direct Internet users to a website that features pornography and links to similar websites.  Such use of a domain name identical or confusingly similar to a third party’s trademark has been consistently and frequently been found not to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"; see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name; see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-oriented website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use; see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) stating that “[m]isdirecting Internet traffic by utilizing Complainant’s registered mark [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Panel infers that Respondent intentionally registered a domain name that incorporates Complainant’s mark and did so for Respondent’s commercial gain.      Respondent’s practice of diversion, motivated by commercial gain, through the use of an identical domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv); see also Kmart v. Khan, 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); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness.

Respondent’s domain name, <sdforum.com>, diverts Internet users who seek Complainant’s mark to Respondent’s pornographic website through the use of a domain name that is identical to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill and reputation associated with Complainant’s mark.  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.18, 2003) finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith; see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name; see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Sandra Franklin, Panelist

Dated: September 13, 2004

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