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Broadcom Corporation v. Patrick J. Starling [2005] GENDND 57 (4 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Sage Group plc. v. Bealo Group SA

Case No. D2004-0934

1. The Parties

The Complainant is The Sage Group plc., North Park, Newcastle upon Tyne, United Kingdom of Great Britain and Northern Ireland, represented by Ward Hadaway Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Bealo Group SA, of Geneve, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <sagediscount.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2004. On November 9, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 10, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email 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. 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 November 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2004.

The Center appointed Anders Janson as the sole panelist in this matter on January 5, 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 Complainant is a public limited company incorporated under the laws of the United Kingdom, established in 1981, and since 1989, on the London Stock exchange. The Complainant is a leading supplier of business management software, including financial forecasting software, e-business solutions and customer relationship management software.

The Complainant’s UK subsidiary has approximately 500,000 customers. The Complainant owns domain names such as <sage.co.uk> and <sage.com>.

The Complainant is the owner of numerous trademarks, including “SAGE” as a wordmark as well as a figuremark, and trademarks which incorporates the word “Sage”, inter alia:

- Registration No 1360796, of “SAGE”, registered on October 14 in the UK, 1988, for class 9;

- Registration No 1541841, of “SAGE”, registered on July 14, 1993, in the UK, for class 16;

- Registration No 1541842, of “SAGE”, registered on July 14, 1993, in the UK, for class 38;

- Registration No 1541843, of “SAGE”, registered on July 14, 1993, in the UK, for class 42;

- Registration 2053692, for “SAGE On-line”, registered on January 25, 1996, in the UK, for classes 9, 16, 35 and 42.

- Registration 2146831, for “SAGE INSTANT”, registered on October 2, 1997, in the UK, for classes 9, 16, 35 and 42;

- Registration 2387, for “SAGE”, registered on April 1, 1996, a community trademark, for classes 9, 16 and 38; and

- Registration 487280, for figuremark “ Sage”, registered on March 13, 1997, a community trademark, for classes 9, 16, 35 and 42; and

- Registration 1958073, for “SAGE”, registered on November 16, 2000, a community trademark, for classes 9, 16, 35, 36, 37, 28, 41 and 42.

The panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of the registrations listed in the Complaint predate the date of registration of the disputed domain name by the Respondent, which was on July, 23, 2004.

The panel finds it established that “SAGE” is a well-recognized trademark and that the trademark is both distinctive and famous.

The Respondent is Bealo Group SA, with a stated address in Geneva, Switzerland. The Disputed Domain name links to a site promoting and selling a penis enlargement supplement.

The Respondent is in default, and accordingly, has not challenged the conclusions of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name have been registered and are being used in bad faith; and

- The domain name <sagediscount.org> should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name at issue is <sagediscount.org>. Complainant is the holder of a large number of registered trademarks of the word and figure mark “SAGE”, as well as trademarks including the word “SAGE”.

The disputed domain name contains the Complainant’s mark “SAGE” in its entirety, with the added suffix “discount” and the generic and functional top level domain name “.org”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs which constitutes the suffix, shall be disregarded.

The question is therefore if the addition of the suffix “discount” renders the disputed domain name dissimilar from Complainants registered trademarks.

In previous decisions, the Panelists have found that the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).

The Panel finds that the term “SAGE” is the distinctive part of the disputed domain name, and the generic term “discount” adds little to the overall impression of the disputed domain name. Internet users are likely to assume that the addition of the word “discount” to the trademark “SAGE” signify a website associated with the Complainant.

The Panel finds that the addition of the suffix “discount” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.

The domain name must therefore be considered confusingly similar to the trademark “SAGE”. The panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainants asserts that the Respondent uses the domain name to market a product with no relation to the “SAGE” mark, thus not making a bona fide offering of goods and services pursuant to Policy 4(c)(i). The Complainant further asserts that the Complainant has never authorized the Respondent to use a domain name in such manner. The Respondent has made no lawful use of the domain name. In conclusion, the Complainant asserts that the Respondent has no right or legitimate interest in respect of the domain name.

The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, the mere assertion from the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists.

The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Finally, the Panel has to consider the question of the disputed domain name having been registered and used in “bad faith.”

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your web-site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.

The Complainant has asserted and provided evidence of that the Respondent is in the habit of registering domain names incorporating well-known trademarks in order to attract visitors to its website (Toastmasters International v. Nealo Group SA, Claim No FA 030700016798 (NAF August 25, 2003) and Radisson Hotels International Inc v. Bealo Group SA, Claim No. FA 0311000214459 (NAF January 12, 2004)).

An Internet user searching for products provided by the Complainant is likely to visit the Respondent’s website.

The Panel has established that the mark “SAGE” is recognizable. The Panel considers it highly unlikely that the Respondent by coincidence have registered the disputed domain name, which is different from the Complainant’s trademark and several websites only by the addition of the suffix “discount” taking into account in particular, Respondent’s habit of registering domain names incorporating well-known trademarks.

Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. There are no obvious reasons for the Respondent to have a legitimately use of the domain name. As has been established above, the only use of the domain name seems to be to market and offer products with no association to the Complainant.

The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

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, <sagediscount.org> be transferred to the Complainant.

Anders Janson
Sole Panelist

Date: January 19, 2005