national arbitration forum

DECISION

Solidvision, Inc. v. Domain Deluxe

Claim Number:  FA0412000374615

PARTIES

Complainant is Solidvision, Inc. (“Complainant”), represented by Russell S. Chernin, 390 Main Street, Worcester, MA 01608.  Respondent is Domain Deluxe (“Respondent”), 16/F Cheung Kong Center, Hong Kong, HK.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <solidvision.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2004.

On December 7, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the National Arbitration Forum that the domain name <solidvision.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 December 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@solidvision.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 6, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <solidvision.com> domain name is identical to Complainant’s SOLIDVISION mark.

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

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

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

FINDINGS

Complainant, Solidvision, Inc., is a corporation engaged in the business of selling computer-aided design and manufacturing software since 1995.  Complainant is an authorized reseller of SolidWorks, Inc. products.  Complainant also develops and sells products under the SOLIDVISION mark.  Complainant additionally provides installation, training and support services to the purchasers of its software.

Respondent registered the <solidvision.com> domain name on October 2, 2001.  Respondent’s domain name resolves to a website that links to various businesses, including Complainant and software companies that directly compete with Complainant.                                         

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

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

Complainant has established rights in the SOLIDVISION mark, despite the fact that Complainant has not registered this particular mark with any trademark authority.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Complainant has established secondary meaning in the mark through continuous use of the mark in commerce since 1995.  Additionally, the fact that Respondent’s domain name resolves to a website that links to Complainant and Complainant’s competitors gives rise to the inference that the SOLIDVISION mark has gained some degree of secondary meaning.  Thus, the Panel finds that Complainant has established common-law rights in the SOLIDVISION mark.  See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

Respondent’s <solidvision.com> domain name is identical to Complainant’s SOLIDVISION mark but for the addition of the generic top-level domain “.com.”  Such addition is not enough to distinguish the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

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

Rights or Legitimate Interests

The Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

Moreover, Respondent has used the <solidvision.com> domain name to direct Internet users to competing software providers.  Such competing use of a domain name identical to Complainant’s SOLIDVISION mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that Respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the names to divert Internet users to a website that offered competing services with those offered by Complainant under its marks); see also Glaxo Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that Respondent was not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the trademark pursuant to Policy ¶ 4(c)(iii) because Respondent used the domain name to take advantage of Complainant's mark by diverting Internet users to a competing commercial site).

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

Registration and Use in Bad Faith

Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering a domain name that is identical to Complainant’s mark and using it to market competing software providers.  See Pitanguy v. Pitanguy Plastic Surgical Clinic, FA 205125 (Nat. Arb. Forum Dec. 8, 2003) (finding that Respondent registered a domain name primarily to disrupt Complainant’s competing business because Respondent had knowledge of Complainant and its mark at the time it registered a domain name identical to Complainant’s mark); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

Furthermore, Respondent is capitalizing on the goodwill of the SOLIDVISION mark by using the disputed domain name to divert Internet users to a website featuring links to competing software providers.  Since the disputed domain name is identical to Complainant’s mark, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting website.  The Panel infers that Respondent receives click-through fees for redirecting Internet users to these competing websites.  Therefore, Respondent’s opportunistic use of the disputed domain name represents bad faith registration and use under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (finding that Internet users would be confused as to the source of Respondent's website that offered links to third party websites in competition with complainant because users “are likely to use search engines to find Complainant’s website,” and would presumably be unaware of the actual source of respondent’s website); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  January 20, 2005

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