Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Symark International, Inc. v. Gary McCurty [2005] GENDND 1079 (15 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Symark International, Inc. v. Gary McCurty

Case No. D2005-0235

1. The Parties

The Complainant is Symark International, Inc., Agoura Hills, California, United States of America, represented by William A. Finklestein, Esq., of the law firm Alschuler Grossman Stein & Kahan, United States of America.

The Respondent is Gary McCurty, Mannsville, Kentucky, United States of America.

2. The Domain Name and Registrar

The disputed domain name <symarksoftware.com> is registered with TLDS L.L.C., a Delaware corporation, a/k/a TLDs, Inc., d/b/a SRSplus a wholly owned subsidiary of Network Solutions, LLC (“SRSplus”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2005. On March 4, 2005, the Center transmitted by e-mail to SRSplus a request for registrar verification in connection with the domain name at issue. On March 8, 2005, SRSplus transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact.

On March 11, 2005, the Center sent Complainant a Complaint Deficiency Notification (“Notification”) via e-mail with a copy to the Respondent. As a result of a miscommunication, on April 4, 2005, the law firm representing Complainant confirmed via telephone conversation with the Center that the attorney handling this matter could not verify that he had received the Notification. Therefore, that same day, the Center sent an additional copy of the Notification to Complainant’s counsel via e-mail with copies to all appropriate parties. In light of Complainant’s representation, the Center also extended the deadline for filing an Amendment to the Complaint pro hac vice until April 9, 2005.¹ The next day, April 5, 2005, Complainant sent its revised Complaint and an Amendment to cure the noted deficiencies. A hard copy of these documents was received by the Center on April 7, 2005. The Center then verified that the Amendment to 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 Amendment to the Complaint by all the prescribed methods and to all the appropriate entities, and the proceedings commenced on April 8, 2005.²

In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default via e-mail on May 2, 2005.³

The Center appointed Craig Edward Stein as the sole panelist in this matter on June 1, 2005. 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

The full record in this matter, which includes the Complaint and attached exhibits, as well as the other documents contained in the case file, establish the following facts:

A. The Complainant

The Complainant in this administrative proceeding is Symark International, Inc. (“Symark”) which is in the business of developing, marketing and licensing its proprietary security software for computer operating systems. Complainant’s computer software products, include its POWERBROKER and POWERPASSWORD programs. These programs allow system administrators to control a computer user’s access to sensitive information on company-owned computer servers. Complainant licenses its information security software products to customers in dozens of countries and, as a result, its software protects several hundred thousand UNIX and Linux computer servers around the world. Complainant’s clients include a variety of companies, including those in the pharmaceutical and defense industries. Recently, the United States Internal Revenue Service (“IRS”) announced that it would be licensing one of Complainant’s products to protect the confidentiality of information pertaining to American taxpayers.

In furtherance of its business strategy, Complainant has registered and owns United States Trademark Registration No. 2779365 for SYMARK, International Class 9 – Electrical and Scientific Apparatus, Goods/Services, Computer Software Programs to assist in systems administration and security on a computer operating system; U.S. Classes 21, 23, 26, 36 and 38. Complainant filed for this trademark with the United States Patent and Trademark Office on December 6, 2002, and the trademark was registered on November 4, 2003. However, since its inception in 1985, Complainant has continually used both the unregistered mark SYMARK SOFTWARE, and the now registered trademark, SYMARK, in connection with the development and licensing of its computer software programs.

Similarly, Complainant has registered the domain name <symark.com>.⁴ The Complainant’s domain name resolves to its official website which displays information about the Complainant and its computer software products. The website also contains numerous references to its registered mark, SYMARK, and the unregistered term SYMARK SOFTWARE. Complainant’s website attracts more than 8,000 visitors per month.

B. The Respondent

There is no record evidence concerning the business activities of Respondent, Gary McCurty (“McCurty”). What scant information the case file does reveal is detailed above in Section 3, Procedural History. Thus, it is known that neither the e-mail address nor mailing address provided by the Respondent to the Registrar is accurate. Indeed, whether Mr. McCurty is even the Registrant’s true identity is uncertain. Nonetheless, according to the Registrar, McCurty registered the disputed domain name <symarksoftware.com> on October 1, 2004.

C. The website to which the disputed domain name resolves

When the disputed domain name <symarksoftware.com> is entered into a web browser, the user is directed to a website that displays a page which purports to be that of the Complainant. The first page of Respondent’s website displays a verbatim description of Complainant’s software products that the Complainant itself employs on its own website. Moreover, some of the text that has been lifted from Complainant’s website is clearly marked with the “©” copyright symbol.

In addition, Respondent’s web page also contains a list of links in the upper left hand corner. This list includes the following topics:

Index

Unix Administration

Unix Access Control

Root Delegation

Passwords User Logins

Password Security Policy

Password Policy

Password Management

Network Security Software

Network Security Policy

Network Security Password

Network Security Attacks

Login Security

Linux Authorization

Linux Authentication

Internet Security Software

Data Security Software

Computer Security Software

Computer Network Security

Unix Authorization

User Authentication Server

If a user clicks on these various links, the webpage resolves to another page that appears almost identical to the one that immediately preceded it, except that the copyrighted text taken from Complainant’s official website changes to match the topic to which the user has selected.⁵ To the immediate right of these links and covering the top half of the Respondent’s webpage is a large banner with the instruction stating “Click to Enter”. In its Complaint, Symark represented that “if a user actually clicks on this instruction, the user is then directed to Complainant’s actual webpage”. However, at the time the Panel reviewed the Respondent’s website, the banner no longer resolved to the Complainant’s official website, but rather to a page entitled <freebannertrade.com>.⁶

Finally, on each page of the website to which the disputed domain name resolves, including those pages that are displayed when one of the “topics” listed above is clicked on, four “boxes” are displayed that contain a series of “Sponsor Ads”. Each of these Sponsor Ads includes a hyperlink that allegedly directs the user to the webpage of the sponsoring advertiser. These advertisements offer products that are unrelated to the Complainant’s business, such as satellite dishes, used motor home parts and even “church equipment”.

5. Parties’ Contentions

A. Complainant

1. The domain name <symarksoftware.com> is identical or confusingly similar to Complainant’s SYMARK registered trademark and to its common law rights in the unregistered mark SYMARK SOFTWARE because:

(a) Complainant is the undisputed and exclusive owner of the SYMARK registered trademark and service mark.

(b) Under United States law, this registration is prima facie evidence of the validity of the registered mark.

(c) In addition, this registration constitutes constructive notice of Complainant’s rights.

(d) So too, Complainant maintains that it also has “common law” or “use-based” rights in the unregistered trademark and service mark “SYMARK SOFTWARE”. This alleged unregistered SYMARK SOFTWARE mark is clearly identical to Respondent’s domain name and constitutes an independent basis for a finding that the Complainant has met its burden of proving paragraph 4(a)(i) of the Policy.

(e) The SYMARK and SYMARK SOFTWARE marks are well-known in the international computer software industry. Consumers have come to immediately recognize these marks and to associate them with Complainant’s information security software.

(f) As a result of Complainant’s extensive use, Complainant has acquired valuable goodwill in these marks.

(g) The test of confusing similarity is confined to a consideration of the disputed domain name and the trademark. Disney Enterprises. Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (“essential” or “virtual” identity with a mark is sufficient to demonstrate confusing similarity).

(h) Here such confusing similarity and virtual identity exists because the only differences between Complainant’s registered mark and the domain name in dispute are inconsequential: The disputed domain name only adds the generic word “software”. Because “software” is the primary product which: (i) Complainant has been selling for 20 years; (ii) is covered by Complainant’s trademark registration; and (iii) is the product with which the mark is identified in the public’s mind, the overall impression is of conceptual identity, and thus confusing similarity.

(i) In addition, the mere addition of a descriptive or generic word, e.g., “software”, to a well-known trademark is not sufficient to avoid consumer confusion or infringement. Here, confusion is highly likely because Complainant’s registered SYMARK trademark is specifically linked to computer software. As the panel in Viacom International, Inc. v. Matrix Management and T. Parrot, WIPO Case No. D2001-1442, stated in finding the domain name <mtvvideos.com> was confusingly similar to the famous MTV mark: “concatenating the term ‘videos’ to the Complainant’s mark…to form the contested domain name does not dispel any confusion, rather it likely exacerbates it”. Accord, Frederick’s of Hollywood, Inc. v. Bob L. Reichenberg, WIPO Case No. D2002-0667, (finding combination of trademark FREDERICK’S owned by Complainant who sold lingerie, with the descriptive term “lingerie” only enhances confusion, transfer of disputed domain name <frederickslingerie.com> ordered).

(j) Several other UDRP panels have found the existence of confusing similarity where, as here, the term “software” is appended to a registered trademark to form the domain name in dispute. This is especially true if the Complainant’s trademark is identified in some manner with the computer software industry. For example, in Pivotal Corporation v. Discovery Street Trading Co., Ltd. WIPO Case No. D2000-0648, the Complainant, Pivotal Corporation, a computer software manufacturer, owned several registered marks that contained the term “Pivotal”. The Complainant was also known as “Pivotal Software Inc.” and used the term “Pivotal Software” in association with its software products. In addition, Complainant had previously registered the domain name <pivotal.com>.

(k) In the Pivotal v. Discovery Street case, in ordering the transfer of the domain name in dispute, the panel found that: (1) the term “software” was purely descriptive, and that the absence of a registration for the phrase “pivotal software” was of no import; (2) the registered mark was sufficiently distinctive of Complainant’s products and services, even though the mark had only been registered for five years (which the panel acknowledged could be viewed as a considerable amount of time in the software industry); and (3) confusing similarity existed because the challenged domain name was derived from a registered mark and the word “software” described the nature of the business for which the mark was registered.

(i) So too here, where the Complainant develops and licenses software, and the domain name in dispute merely appends the word “software” to the registered mark, the same result should entail. Indeed, the addition of the word ‘software’ “does not dispel any confusion, rather it likely exacerbates it”. See, Viacom International. v. Matrix Management, supra.

(m) Other UDRP panel decisions have reached similar results in cases that, like here, involve the creation of a domain name by adding the term “software” to the registered mark of a complainant whose business is in the computer software or information technology industries. See, Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; Sharman License Holdings. Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659; Sharman License Holdings. Limited v. Domains at Fabulous, WIPO Case No. D2004-0915.

(n) The decisions in these cases reflect the reality that Internet users will frequently enter a trademark with an associated word (such as in this case with the terms “Symark” and “software”) into their browsers when attempting to find a website identified by a Complainant’s mark. Because of this common behavior, an Internet user can easily become confused believing that the website reached is linked to the legitimate trademark owner’s business when, in fact, it is not.

(o) An analogous line of UDRP panel decisions where trademarks are linked to words (other than the term “software”) which are in some manner related to a legitimate trade or service mark also support Complainant’s position. Examples include: American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602 (finding confusing similarity between Complainant’s well-known SOLGAR mark that was registered for use in connection with the sale of vitamins and the domain name <solgarvitamins.com>); Guinness UDV North America v. Timothy Nicholas Llewellyn Lewis, WIPO Case No. D2001-0621 (finding confusing similarity between well-known vodka mark SMIRNOFF and the domain name <smirnoffbar.com>); Quixtar Investments. Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding legal identity between complainant’s QUIXTAR trademark and the disputed domain name <quixtarmortgage.com>); GA Modefine SA v. AES Optics, WIPO Case No. D2000-0306 (“[T]rademarks of Complainant [for “Armani”] are identical to the domain name <armani-sunglasses.com> … [and] the adjunction of the word ‘sunglasses’ cannot modify the attractive power of the [trademark]”); Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283, (<fortehotels.com> confusingly similar to FORTE trademark registered for use in connection with the hotel industry); Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (<catmachines.com> confusingly similar to the CATERPILLAR and CAT trademarks owned by manufacturer of earth moving and construction machinery.)

(p) As a final point, Complainant notes that it is well-settled that the addition of the generic top level domain name extension “.com” to a protected mark makes no essential difference. So too here, the addition of the “.com” extension should not preclude a finding of identity or confusing similarity.

2. Respondent has no rights or legitimate interests with respect to the disputed domain name <symarksoftware.com> because:

(a) First, Respondent has not received any permission or license from Complainant to use its protected marks.

(b) Second, upon information and belief, Respondent has no business or other reason for using Complainant’s registered SYMARK trademark or unregistered SYMARK SOFTWARE mark. So too, Respondent is not commonly known by the names SYMARK or SYMARK SOFTWARE. In the same vein, Respondent has never conducted any prior business under these names.

(c) Third, Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name. To the contrary, Respondent is using <symarksoftware.com> for an illegitimate commercial purpose by misleading Internet users who are searching for Complainant’s products and website and then diverting them to a “knock-off” webpage that ostensibly exists for the sole purpose of generating revenue for the Respondent from posted, third-party advertisements.

(d) Fourth, Respondent’s improper registration also has the pernicious effect of blocking Complainant from using an intuitive domain name that incorporates its key product category.

(e) Fifth, Respondent is not now, and has not in the past used the <symarksoftware.com> domain name, or a name corresponding to that domain name, in connection with a bona fide offering of goods or services.

(f) Sixth, in the course of improperly using the disputed domain name, Respondent has infringed upon Complainant’s legitimate rights by constructing a webpage that blatantly misappropriates Complainant’s marks and copyrighted material.

3. The domain name <symarksoftware.com> should be considered as having been registered and used in bad faith by Respondent because:

(a) First, Respondent has deliberately registered and used a domain name to which he has no legitimate claim.

(b) The disputed domain name is confusingly similar and essentially identical to Complainant’s registered SYMARK trademark since it completely incorporates that mark and couples it with the generic product category “software”, the product line with which it is most closely associated.