Anthony Minessale II v. Freeswitch Quebec / Domain Administrator
Claim Number: FA1012001361942
Complainant is Anthony Minessale II (“Complainant”), Wisconsin, USA. Respondent is Freeswitch Quebec / Domain Administrator (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freeswitch.com>, registered with Rebel.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2010; the National Arbitration Forum received payment on December 6, 2010.
On December 07, 2010, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <freeswitch.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@freeswitch.com. Also on December 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freeswitch.com> domain name is identical to Complainant’s FREESWITCH mark.
2. Respondent does not have any rights or legitimate interests in the <freeswitch.com> domain name.
3. Respondent registered and used the <freeswitch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anthony Minessale II, is owner of the FREESWITCH software, a voice over IP software available on the Internet. Complainant has used the FREESWITCH mark in connection with its software since 2005 and has owned the <freeswitch.org> and <freeswitch.net> websites since 2005 and 2006 respectively. Complainant holds a trademark registration for its FREESWITCH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,579,967 filed July 16, 2008; issued February 24, 2009).
Respondent, Freeswitch Quebec / Domain Administrator, registered the <freeswitch.com> domain name on November 14, 2006. The disputed domain name resolves to a directory website featuring third-party links, some of which directly compete with Complainant’s voice over software technology.
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.
Complainant holds a trademark registration with the USPTO for its FREESWITCH mark (Reg. No. 3,579,967 filed July 16, 2008; issued February 24, 2009). The Panel finds Complainant has established rights in its FREESWITCH mark under Policy ¶ 4(a)(i) dating back to July 16, 2008. 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 Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts common law rights it its FREESWITCH mark dating back to November 1, 2005, through its continuous use in the promotion and operation of its voice over Internet-based software since 2005. Complainant registered the <freeswitch.org> domain name in 2005 and the <freeswitch.net> domain name in 2006. Complainant’s trademark registration with the USPTO shows a first use in commerce date of November 1, 2005. The Panel finds that Complainant has provided sufficient evidence to support a finding of common law rights in the FREESWITCH mark pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Respondent’s <freeswitch.com> domain name is identical to Complainant’s FREESWITCH mark. The disputed domain name incorporates Complainant’s entire mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the simple addition of a gTLD does not sufficiently change the disputed domain name from Complainant’s mark. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). Therefore, the Panel finds that Respondent’s <freeswitch.com> domain name is identical to Complainant’s FREESWITCH mark under Policy ¶ 4(a)(i).
The Panel concludes that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent lacks rights and legitimate interests in the <freeswitch.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, Complainant has established a prima facie case in support of its allegations against Respondent. Since Respondent failed to submit a response to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii). See 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). However, the Panel will look to the record to see if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <freeswitch.com> domain name. The WHOIS information identifies Respondent as “Freeswitch Quebec.” Although Respondent seems to be commonly known by the disputed domain name with “Freeswitch” appearing in the WHOIS registrant information, the Panel finds that without conclusive evidence in the record, Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Respondent uses the <freeswitch.com> domain name to redirect Internet users to a directory website listing third-party links, some of which directly compete with Complainant’s voice over software. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the domain name, identical to Complainant’s trademark, to operate a website which leads Internet users to Complainant’s competitors, 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The disputed domain name resolves to a website featuring links to third-party sites, including some of Complainant’s competitors in the voice over software industry. Internet users intending to purchase or use Complainant’s software may be redirected to Respondent’s website and may purchase from a competitor instead. The Panel finds that Respondent is disrupting Complainant’s business and is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The use of Complainant’s FREESWITCH mark in the disputed domain name may create some confusion as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and third-party links listed. Respondent takes advantage of this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the <freeswitch.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeswitch.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 13, 2011
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