Bitberry Software ApS v. Alex Kistenev
Claim Number: FA0902001249404
Complainant is Bitberry Software ApS (“Complainant”), represented by Steven
L.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bitzip.com> and <bitzip.net>, registered with Godaddy.com, Inc., and <bitzip.org>, registered with Moniker Online Services LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2009.
On February 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bitzip.com>, <bitzip.net> domain names are registered with Godaddy.com, Inc., and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 10, 2009, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <bitzip.org> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the "Policy".
On March 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 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@bitzip.com, postmaster@bitzip.net, and postmaster@bitzip.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bitzip.com>, <bitzip.net>, and <bitzip.org> domain names are confusingly similar to Complainant’s BITZIPPER mark.
2. Respondent does not have any rights or legitimate interests in the <bitzip.com>, <bitzip.net>, and <bitzip.org> domain names.
3. Respondent registered and used the <bitzip.com>, <bitzip.net>, and <bitzip.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bitberry Software ApS, is a software company that designs, programs, and retails a data compression application called “Bitzipper.” Complainant began selling this software under the BITZIPPER mark in August 2000 and has continuously used this mark since that time. Complainant grosses more than $100,000 in annual sales and has obtained millions of unique visitors to its website. Complainant holds a registration of its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,500,692 issued September 16, 2008, filed April 5, 2007). In addition, on May 20, 2008, Complainant prevailed in a trademark opposition proceeding against Respondent for Respondent’s federal trademark application for its BITZIP mark.
Respondent registered the <bitzip.net>
domain name
on July 7, 2003, the <bitzip.com> domain name on July 28, 2003,
and the <bitzip.org> domain name on January 5, 2007. All of the disputed domain names resolve to a
website that sells a competing software product.
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.
The Panel finds that Complainant has sufficiently
established rights in the BITZIPPER mark because it holds a registration of the
mark with the USPTO, wherein such rights date back to the filing date of the
trademark application on April 5, 2007.
Complainant began selling software under the BITZIPPER mark
in August 2000 and has continuously used this mark since then, grosses more
than $100,000 in annual sales, and has obtained millions of unique visitors to
its website. The Panel finds that
Complainant has sufficiently established secondary meaning, and thus, common
law rights in its BITZIPPER mark under Policy ¶ 4(a)(i)
because of its extensive and continuous use in conjunction with its gross sales
dating back to 2000. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
All
of the <bitzip.com>, <bitzip.net>, and <bitzip.org>
domain names resolve to Respondent’s website that sells a competing
software product. The Panel finds that
Respondent uses the disputed domain names to divert Internet users to its
competing website, and thus, this diversion is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site);
see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003) (finding that the respondent used a domain name for
commercial benefit by diverting Internet users to a website that sold goods and
services similar to those offered by the complainant and thus, was not using
the name in connection with a bona fide offering of goods or services
nor a legitimate noncommercial or fair use).
Furthermore, Respondent is listed in the WHOIS information
as “Alex Kistenev,” which does not
indicate that Respondent is commonly known by the <bitzip.com>, <bitzip.net>, and <bitzip.org>
domain names. Respondent has not offered any evidence to
indicate otherwise. The Panel finds that
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not
apply); 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 [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the aforementioned diversion of Internet users to Respondent’s competing website is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Moreover, the Panel finds that Respondent is using the
confusingly similar <bitzip.com>, <bitzip.net>,
and <bitzip.org> domain
names to sell products that compete with Complainant, and thus is evidence of
bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is
trading off the goodwill surrounding Complainant’s mark. See Dell Inc. v.
Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23,
2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services); see also Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitzip.com>, <bitzip.net>, and <bitzip.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 23, 2009
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