DECISION

CyberMatrix Corporation, Inc. v. MustNeed.com

Claim Number:  FA0402000236364

PARTIES

Complainant is CyberMatrix Corporation, Inc. (“Complainant”), Calgary, Alberta,  Canada, represented by Michael Fullerton, 98 Chapalina Way S.E., Calgary, Alberta, Canada T2X 3P4.  Respondent is MustNeed.com (“Respondent”), P.O. Box 3506, Taipei, Taiwan, TW 100-00.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cybermatrix.com>, registered with Moniker Online Services, Inc.

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflicts in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically February 6, 2004; the Forum received a hard copy of the Complaint February 9, 2004.

On February 9, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum that the domain name <cybermatrix.com> is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, 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 February 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 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@cybermatrix.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 March 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <cybermatrix.com>, is identical to Complainant’s CYBERMATRIX mark.

2. Respondent has no rights to or legitimate interests in the <cybermatrix.com> domain name.

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

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

FINDINGS

Complainant established by extrinsic proof that it owns the registration for the CYBERMATRIX trademark, which was approved by the Canadian Intellectual Property Office (“CIPO”) on July 26, 2000.  The CYBERMATRIX trademark is used in connection with computer software utilized by individual consumers, businesses, and educational institutions.  The trademark also is used to identify computer databases and information management software for individuals, governments and utilities for such purposes as bill tracking, appointment scheduling and database management.

Complainant also operates its business at the <cyber-matrix.com> domain name.

Respondent registered the disputed domain name, <cybermatrix.com>, December 27, 2002.  Respondent has used the <cybermatrix.com> domain name to host a search engine service that contains links to a variety of commonly searched subjects such as “health,” “travel,” and “shopping.” 

Complainant inquired into the possible purchase price of the disputed domain name from Respondent, using an e-mail dated January 27, 2004, and Respondent replied by e-mail stating: “We think $2000 should be proper.” 

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established rights in the CYBERMATRIX mark through its registration of the mark with the CIPO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

Complainant also established that the disputed domain name <cybermatrix.com> incorporates Complainant’s registered CYBERMATRIX mark in its entirety and thus is identical to Complainant’s mark under Policy ¶ 4(a)(i). The addition of the generic top-level domain “.com” is irrelevant under the Policy. See Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant alleges that Respondent has no rights to or legitimate interests in the mark. The Panel finds that Respondent lacks such rights and legitimate interests in the disputed domain name because Respondent failed to respond to the Complaint and show that it had such rights. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

While recovery by the Complainant is not automatic when a Respondent failed to file a Response, in the absence of a response, the Panel may accept allegations in the Complaint as true when they are supported by some extrinsic proof. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. 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). Further, nothing in the record suggests that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent has no rights or legitimate interests in the name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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").

Complainant alleges that Respondent is using the domain name, which is identical to Complainant’s mark, to divert Internet users to a search engine website for purposes of earning revenue.  The Panel finds that such use is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted advertisements was evidence that it lacked rights or legitimate interests in the domain name); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and advertisements).

Therefore, the Panel finds that Complainant established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the domain name in bad faith.  In fact, Complainant inquired into the possible purchase price of the disputed domain name from Respondent by e-mail dated January 27, 2004.  In Respondent’s reply e-mail, Respondent stated: “We think $2000 should be proper.”  The Panel finds that Respondent attempted to sell the domain name for $2000., and amount in excess of reasonable out-of-pocket expenses incurred by Respondent.  The fact that Complainant initiated the sale inquiry is afforded very little weight.  The Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i), by registering the domain name apparently for the purpose of selling the name registration to Complainant, the owner of the CYBERMATRIX mark, for consideration in excess of any out-of-pocket expenses. See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith); see also Tech. Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent offered the domain names for sale for $2,000); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale).

Additionally Complainant alleges that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by diverting Internet traffic to Respondent’s website, away from Complainant’s business located at <cyber-matrix.com>.  Since Respondent did not file a Respond to the Complaint, the Panel accepts Complainant’s assertion as true and finds that Respondent also registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); 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)).

Complainant established Policy ¶ 4(a)(iii).

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 <cybermatrix.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: March 30, 2004

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