SAS Institute Inc. v. Shaukat Miraj
Claim Number: FA0909001286507
Complainant is SAS Institute Inc. (“Complainant”), represented by Maury
M. Tepper, III, of Tepper & Eyster, PLLC, North
Carolina, USA. Respondent is Shaukat
Miraj (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sas-institute-exams.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2009.
On September 28, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sas-institute-exams.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 September 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@sas-institute-exams.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a software company that markets its products and services under the SAS trademark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on April 1, 1980 (Reg. No. 1,132,122).
Complainant has used the SAS mark continuously in commerce since at least as early as 1976, to serve its customers in business, governments and universities in 119 countries.
Respondent registered the disputed <sas-institute-exams.com> domain name on December 18, 2006.
The disputed domain name resolves to a website that advertises software and other exam products that compete with Complainant’s products.
Respondent’s <sas-institute-exams.com> domain name is confusingly similar to Complainant’s SAS mark.
Respondent is not commonly known by the <sas-institute-exams.com> domain name, nor has it ever been an owner or licensee of the SAS mark.
Respondent does not have any rights to or legitimate interests in the <sas-institute-exams.com> domain name.
Respondent’s conduct, as alleged, disrupts Complainant’s business by diverting Internet users to Respondent’s website that resolves from the disputed domain name.
Respondent gains commercially from sales of the competing goods on the website resolving from the contested domain name.
Respondent both registered and uses the disputed <sas-institute-exams.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SAS trademark for purposes of Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Enter.
Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25,
2004) (finding that a complainant, who registered the ENTERPRISE RENT-A-CAR
mark with the USPTO, thereby successfully established rights in the mark).
Complainant contends that Respondent’s <sas-institute-exams.com> domain name is confusingly similar to its SAS mark. The disputed domain name differs from Complainant’s mark in three ways: (1) the descriptive terms “institute” and “exams” have been added to the mark; (2) hyphens have been inserted between each term; and (3) the generic top-level domain (“gTLD”) “.com” has been added at the end of the mark. Under Policy ¶ 4(a)(i), adding descriptive terms and hyphens to a mark does not sufficiently distinguish a disputed domain name from that mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); further see Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”).
Finally, the addition of a gTLD
does nothing to distinguish a domain name from a mark because all domain names
must include a top-level domain. See Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that
the <sas-institute-exams.com> domain name is not sufficiently distinguished from, and is instead
confusingly similar to, Complainant’s SAS mark
pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Complainant has the initial burden of showing that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case, the burden shifts to Respondent to show that it nonetheless has rights to or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant
must make a prima facie showing that Respondent does not have rights or legitimate
interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interest in the subject domain names.
From the allegations of the Complaint, we conclude that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. And, because Respondent has not responded to the Complaint, we are entitled to presume that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
We nonetheless elect to examine the record before us to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain sufficient to satisfy any of the provisions of Policy ¶ 4(c).
We begin by observing that Complainant contends, and
Respondent does not deny, that Respondent is not commonly known by the <sas-institute-exams.com> domain
name, nor has it ever been an owner or licensee of the SAS mark. Moreover, the WHOIS record for the disputed
domain name identifies Respondent only as “Shaukat
Miraj.” On this record, we conclude
that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): (“Respondent has registered the domain
name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain
name registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the pertinent WHOIS
information and other evidence in the record).
We also note that there is no dispute as to Complainant’s allegation to the effect that Respondent is using the <sas-institute-exams.com> domain name to host a website that advertises software and other exam products that compete with Complainant’s business. In accordance with previous panels, we therefore conclude that this use of the <sas-institute-exams.com> domain name by Respondent is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the domain there in issue to take advantage of a complainant's mark by diverting Internet users to a competing commercial site).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is disrupting Complainant’s business by diverting Internet users to Respondent’s website that resolves from the disputed domain name, where Respondent is advertising products that compete with Complainant’s products. Respondent does not dispute these allegations. Therefore, we conclude that this use of the disputed domain name by Respondent is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that that respondent registered and used the domain name to disrupt that complainant’s business under Policy ¶ 4(b)(iii)); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting a competitor's business where the parties were part of the same highly specialized field).
Complainant also contends that Respondent gains commercially
from the diversion of Internet users from the sales of competing goods on the
website resolving from the contested domain name. Again Respondent does not deny this
assertion. We are therefore comfortable
in concluding that Respondent is using the disputed domain name for commercial
gain through a likelihood of confusion with Complainant’s mark. Under Policy ¶
4(b)(iv), this use is further evidence of Respondent’s
registration and use of the disputed domain in bad faith. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that a respondent’s use of the <arizonashuttle.net> domain name,
which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet
traffic to that respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see
also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007)
(finding that a respondent registered and used a disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) where that respondent gained commercially
from the likelihood of confusion between a complainant’s AIM mark and the
competing instant messaging products and services advertised on that
respondent’s website resolving from the disputed domain name).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <sas-institute-exams.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 9, 2009
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