national arbitration forum

 

DECISION

 

Dell Inc. v. Versata Software, Inc. c/o Versata Hostmaster

Claim Number: FA0902001246916

 

PARTIES

 

Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is Versata Software, Inc. c/o Versata Hostmaster (“Respondent”), British Virgin Islands.[1]

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <messagone.com>, registered with Red Register, Inc.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2009.

 

On February 23, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <messagone.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name.  Red Register, Inc. has verified that Respondent is bound by the Red Register, 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 March 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 2009 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@messagone.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 31, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <messagone.com> domain name is confusingly similar to Complainant’s MESSAGEONE mark.

 

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

 

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

 

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

 

FINDINGS

 

Complainant, Dell Inc., operates an electronic messaging service under its MESSAGEONE mark that it has registered with the United States Patent and Trademark Office (“USPTO”) on November 22, 2005 (Reg. No. 3,017,758; filed Sept. 14, 2004).  Complainant additionally operates a website resolving from its <messageone.com> domain name in connection with these services. 

 

Respondent registered the disputed domain name on March 25, 2005.  Respondent’s disputed domain name resolves to a website that attempts to download malware to an Internet user’s computer. 

 

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).

 

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

 

Complainant has established sufficient evidence of its rights in the MESSAGEONE mark that date back to the mark’s filing date under Policy ¶ 4(a)(i) through Complainant’s registration of the mark with the USPTO.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Respondent’s disputed domain name copies Complainant’s MESSAGEONE mark with the deletion of the second letter “e” and the addition of the generic top-level domain “.com.”  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has established a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  The Panel, however, will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). 

 

Complainant asserts Respondent is using the disputed domain name to resolve to a website that attempts to download malware onto an Internet user’s computer.  The Panel finds this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO Mar. 5, 2009) (finding no bona fide offering of goods and services when the respondent used the disputed domain name for the distribution of malware or hostile software); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Furthermore, Complainant contends Respondent is not commonly known by the disputed domain name.  The Panel finds nothing in the WHOIS information or record to indicate Respondent has ever been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Furthermore, Complainant contends Respondent has engaged in typosquatting.  The Panel finds the practice of typosquatting is itself evidence Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that Respondent has engaged in this practice.  See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s use of the disputed domain name to introduce malware onto an Internet users’ computer is presumably an attempt by Respondent to profit from the confusingly similar disputed domain name.  The Panel assumes Respondent receives fees for engaging in this behavior or uses information gained from the malware software to obtain some form of revenue.  Therefore, the Panel finds Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use); see also 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding the respondent’s use of a website to distribute malware was an attempt to attract Internet users to its website or other online location for commercial gain, by creating a likelihood of confusion with the complainant’s mark).

 

Furthermore, Respondent’s engagement in the practice of typosquatting is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).

 

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

 

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

 

 

 

Bruce E. Meyerson, Panelist

Dated:  April 10, 2009

 

 

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