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Unisys Corporation v. Unisys Consulting, LLC [2004] GENDND 459 (15 April 2004)

1. The Parties

The Complainant is Unisys Corporation, of Pennsylvania, United States of America, represented by Stephanie E. Their, United States of America.

The Respondent is Unisys Consulting, LLC, of Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <unisysconsulting.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2004. On February 20, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 25, 2004, the Center verified the Respondent's contact information by conducting a search and printing the WhoIs results for Respondent, the printout is made a part of this file. On February 25, 2004, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2004.

The Center appointed Sandra Franklin as the sole panelist in this matter on April 7, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is an international information technology solutions company which has done business under the name Unisys Corporation since 1986. Complainant has several registered U.S. trademarks dating back to 1987. Respondent registered the domain name <unisysconsulting.com> on July 14, 2003.

5. Parties' Contentions

A. Complainant

Complainant makes the following contentions:

1. Respondent's <unisysconsulting.com> domain name is confusingly similar to Complainant's UNISYS mark.

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

3. Respondent's registration and use of the <unisysconsulting.com> domain name constitutes trademark infringement.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

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.

A. Identical or Confusingly Similar

Complainant has established its rights in the UNISYS mark through registration with the U.S. Patent and Trademark Office, and through 18 years of use in commerce.

Respondent's <unisysconsulting.com> domain name is confusingly similar to Complainant's mark because the disputed domain name fully incorporates Complainant's mark and merely adds the generic word "consulting" and the generic top-level domain "com." Internet users are likely to mistakenly assume that Respondent's disputed domain name is associated with Complainant. The addition of a generic top-level domain to the end of the domain name does not prevent a finding of confusingly similarity to Complainant's mark. See Google, Inc. v. Freije, FA 102609 (Nat. Arb. Forum January 11, 2002) finding the addition of the generic word "sex" to the GOOGLE mark in a domain name was confusingly similar to Complainant's mark; see also Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (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.

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

B. Rights or Legitimate Interests

Due to Respondent's failure to respond to the Complaint, the Panel may presume once the Complainant has established a prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name pursuant to Policy 4(a)(ii). See America Online, Inc. and AOL International, WIPO Case No. D2000-0654 (August 21, 2000) finding no rights or legitimate interests where Respondent fails to respond and the Complainant had made out a prima facie case; see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution September 23, 2000) finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed.

In addition, it would be extremely difficult for Respondent to show that it has rights or legitimate interests in the disputed domain name because it is confusingly similar to Complainant's well-known mark. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 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; see also Victoria's Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum February 28, 2001) finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant's VICTORIA'S SECRET mark because of Complainant's well-established use of the mark.

Furthermore, Respondent has never acquired authorization from Complainant to use Complainant's mark and the record fails to establish that Respondent is commonly known by the <unisysconsulting.com> domain name. Therefore, Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000) finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name.

C. Registered and Used in Bad Faith

It can be inferred that Respondent had knowledge of Complainant's UNISYS mark because Respondent is in a competing business, the mark is distinctive and recognized worldwide, it has been registered and in use since 1986, and is fully incorporated in Respondent's disputed domain name. Registration of a domain name, despite knowledge of Complainant's rights, is evidence of bad faith registration pursuant to Policy 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration; see also Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412 (December 18, 2000) finding that Respondent had actual and constructive knowledge of Complainant's EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith.

This Panel finds that Respondent registered the <unisysconsulting.com> domain name and incorporated Complainant's mark with the intent to commercially benefit from the goodwill associated with Complainant's mark. Respondent's attempts to commercially benefit through Internet confusion associated with Complainant's mark is evidence of bad faith registration and use pursuant to Policy 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum November 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum November 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).

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

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <unisysconsulting.com> be transferred to the Complainant.