national arbitration forum

 

DECISION

 

Sparta Systems Inc. v. BWI Domains c/o Domain Manager

Claim Number: FA0903001252929

 

PARTIES

Complainant is Sparta Systems Inc. (“Complainant”), represented by Lawrence R Robins, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., Massachusetts, USA.  Respondent is BWI Domains c/o Domain Manager (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <trackwise.com>, registered with Rebel.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 19, 2009.

 

On March 19, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <trackwise.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name.  Rebel.com has verified that Respondent is bound by the Rebel.com 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 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 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@trackwise.com by e-mail.

 

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

 

On April 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <trackwise.com> domain name is identical to Complainant’s TRACKWISE mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Sparta Systems Inc., has been using the TRACKWISE mark since 1995 to identify its computer software products and related services.  Complainant also holds a registration of the TRACKWISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,117,303 issued Dec. 2, 1997).

 

The <trackwise.com> domain name was registered by a third party on November 11, 1998.  After being held by other third parties, Respondent took over the registration of the <trackwise.com> domain name on March 27, 2008.  The disputed domain name resolves to a website displaying links to third-parties, some of which directly compete with Complainant.

 

Respondent has been the respondent in other cases through the National Arbitration Forum where the disputed domain names were transferred from Respondent to the complainants in those cases.  See Choice Hotels Int’l, Inc. v. BWI Domains c/o Domain Manager, FA 1174416 (Nat. Arb. Forum May 7, 2008); see also Cavaliers Operating Co. LLC; Gund Bus. Enter., Inc; and NBA Media Ventures, LLC. v. BWI Domains c/o Domain Manager, FA 1192083 (Nat. Arb. Forum July 2, 2008); ses also JPS Mfg., LLC v. BWI Domains c/o Domain Manager, FA 1211095 (Nat. Arb. Forum Aug. 7, 2008); see also Stunt Dynamics v. BWI Domains c/o Domain Manager, FA 1226425 (Nat. Arb. Forum Nov. 14, 2008); see also McLaughlin Gormley King Co. v. BWI Domains c/o Domain Manager, FA 1230837 (Nat. Arb. Forum Dec. 4, 2008).

 

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, by registering the TRACKWISE mark with the USPTO, has established rights in the mark pursuant to Policy ¶ 4(a)(i).  See Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).

 

The <trackwise.com> domain name consists of Complainant’s TRACKWISE mark and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that gTLDs are irrelevant to an analysis under Policy ¶ 4(a)(i) and therefore the <trackwise.com> domain name is identical to Complainant’s TRACKWISE mark pursuant to Policy ¶ 4(a)(i).  See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).

 

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

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <trackwise.com> domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <trackwise.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the TRACKWISE mark, and the WHOIS information identifies Respondent as “BWI Domains c/o Domain Manager.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).

 

Respondent is using the disputed domain name, which is identical to Complainant’s TRACKWISE mark, to divert Internet users in search of Complainant to third-party websites, including those that directly compete with Complainant’s business.  The Panel finds that this is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 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).

 

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

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in other cases where the disputed domain names were transferred from Respondent to the complainants in those cases.  See Choice Hotels Int’l, Inc. v. BWI Domains c/o Domain Manager, FA 1174416 (Nat. Arb. Forum May 7, 2008); see also Cavaliers Operating Co. LLC; Gund Bus. Enter., Inc; and NBA Media Ventures, LLC. v. BWI Domains c/o Domain Manager, FA 1192083 (Nat. Arb. Forum July 2, 2008); ses also JPS Mfg., LLC v. BWI Domains c/o Domain Manager, FA 1211095 (Nat. Arb. Forum Aug. 7, 2008); see also Stunt Dynamics v. BWI Domains c/o Domain Manager, FA 1226425 (Nat. Arb. Forum Nov. 14, 2008); see also McLaughlin Gormley King Co. v. BWI Domains c/o Domain Manager, FA 1230837 (Nat. Arb. Forum Dec. 4, 2008).  The Panel finds Respondent has engaged in a pattern of registering infringing domain names, amounting to bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent is using the <trackwise.com> domain name to resolve to a website containing links to third-party websites, some of which directly compete with Complainant.  The Panel finds Respondent is using the <trackwise.com> domain name to disrupt Complainant’s business by diverting Internet users to Complainant’s competitors.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Respondent is using the disputed domain name to list links to third-party website, some of which directly compete with Complainant.  The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites.  Because Respondent’s domain name is identical to Complainant’s TRACKWISE mark, Internet users accessing Respondent’s <trackwise.com> domain name may have become confused as to Complainant’s affiliation with the resulting website.  Thus, Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

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

 

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

 

 

 

John J. Upchurch, Panelist

Dated:  April 30, 2009

 

 

National Arbitration Forum