Augur Systems, Inc. v. Direct Privacy ID 461B3, Domain Name Proxy Service, Inc
Claim Number: FA1211001469641
Complainant is Augur Systems, Inc. (“Complainant”), Massachusetts, US. Respondent is Direct Privacy ID 461B3, Domain Name Proxy Service, Inc (“Respondent”), represented by Douglas Van Arsdale of Augur, Inc., Texas, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <augur.com>, registered with DNC HOLDINGS, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2012; the National Arbitration Forum received payment on November 13, 2012.
On November 2, 2012, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <augur.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, INC. 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 November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2012 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@augur.com. Also on November 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
On November 28, 2012, Respondent requested additional time to submit a Response to the Complaint. On November 29, 2012, Respondent’s request was approved, thereby making December 20, 2012 the final date for submitting a Response.
A timely Response was received and determined to be complete on December 20, 2012.
On December 26, 2012, Complainant submitted an Additional Submission that was deemed to be in compliance with Supplemental Rule 7.
On January 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges:
1. Complainant’s first commercial use of the AUGUR mark was in 1999 through sales with Nextel’s US and International customers.
2. Complainant’s AUGUR mark has been reviewed in the 2009 and 2012 “The world’s leading information technology research and advisory company” Gartner Reports.
3. Complainant has rights in the AUGUR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,269,856 filed Aug. 30, 2005; registered July 24, 2007).
4. Respondent’s <augur.com> domain name is identical to Complainant’s AUGUR registered mark.
5. Respondent is not commonly known by the <augur.com> domain name.
6. The WHOIS information for Respondent shows that Respondent is hidden by a proxy service, when the actual registrant is “Mr. Doug Van Arsdale.”
7. Complainant has never granted Respondent permission to use its AUGUR mark.
8. Respondent is not making a legitimate use of the website resolving from the <augur.com> domain name.
9. Respondent has not made a bona fide offering of goods or services.
10. The <augur.com> domain name was solicited to Complainant.
B. Respondent alleges:
1. Complainant has not proven all the elements of the ICANN Rules.
2. The <augur.com> domain name is not identical or confusingly similar to Complainant’s AUGUR mark because the addition of the generic top-level domain (“gTLD”) “.com” is sufficient to dispel any confusion or similarity between the two.
3. At the time Respondent registered the <augur.com> domain name in 2003 Complainant’s business was called, “Industrious Activities, Inc.”
4. Augur, Inc. is legally entitled to use the <augur.com> domain name, and was created March 9, 2003.
5. The resolving website did not develop because Respondent’s extension company, Augur, Inc., did not grow as its owners had intended.
6. Respondent did not offer to sell the <augur.com> domain name in bad faith.
7. Respondent has not acted with bad faith intent to profit from Complainant’s AUGUR mark.
8. Respondent did not divert confused consumers and take them from Complainant.
9. Complainant tried to purchase the domain name from Augur, Inc., and is therefore guilty of bad faith reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission Complainant alleges:
1. Previous panels have found that the addition of the gTLD “.com” to a registered mark was irrelevant when analyzing Policy ¶ 4(a)(i) because all domain names require a top-level domain.
2. Respondent’s rebutting example using “hotels.com” is not sufficient because the word “hotels” could not be a registered mark because it is merely a descriptive term.
3. The AUGUR mark is registered with the USPTO .
4. Respondent’s attempt to sell the <augur.com> domain name is Respondent’s only commercial use of the disputed domain name.
5. Failing to use the disputed domain name for 9 or more years indicates lack of intent to use the domain name for legitimate business purposes and demonstrates bad faith registration and use of the disputed domain name.
In its Additional Submission Respondent alleges:
1. Complainant’s assertions that Respondent’s offer to sell one of its assets amounts to bad faith intent is incorrect.
2. Respondent did not have bad faith intent to profit.
3. Respondent never intended to divert customers away from Complainant, nor did it register other domain names that are similar to Complainant’s mark.
4. Respondent’s lack of commercial success does not show its “lack of intent” to use the domain name for legitimate purposes.
5. Respondent intended to develop a website.
The Panel finds that:
1. the Domain Name <augur.com>, is identical to Complainant’s mark,
2. the Respondent has not established any right or legitimate interest in the Domain Name <augur.com>, and
3. the Respondent has registered and is using the Domain Name <augur.com>, 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."
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 argues it has rights in the AUGUR mark pursuant to Policy ¶ 4(a)(i). Complainant provides evidence of its registration for the AUGUR mark with the USPTO (Reg. No. 3,269,856 filed Aug. 30, 2005; registered July 24, 2007). Previous panels have found that evidence of registration with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel therefore finds that Complainant has rights in the AUGUR mark pursuant to Policy ¶ 4(a)(i). Further, the Panel finds that Complainant’s rights in the mark began on August 30, 2005 when Complainant filed for its trademark registration with the USPTO. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant asserts in its Complaint and Additional Submission that the <augur.com> domain name is identical to Complainant’s AUGUR mark. Complainant claims that the disputed domain name contains Complainant’s AUGUR mark in its entirety with the addition of the gTLD “.com.” Previous panels have found that the addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). The Panel therefore finds that the disputed <augur.com> domain name is identical to Complainant’s AUGUR mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); 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.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is not commonly known by the <augur.com> domain name. Complainant claims its first commercial use of the AUGUR mark was in 1999 through sales with Nextel’s US and International customers. Complainant further claims that Complainant’s AUGUR mark has been reviewed in the 2009 and 2012 “The world’s leading information technology research and advisory company” Gartner Reports. Complainant provides that the WHOIS information for Respondent shows that Respondent is hidden by the proxy service, “Domain Name Proxy Service, Inc.” Complainant argues that according to the soliciting broker, the underlying registrant is “DNC Holdings.” Complainant further claims that it has never granted Respondent permission to use its AUGUR mark in any way. Complainant provides that at the time it tried to register the <augur.com> domain name, it was already registered but not in use. Previous panels have found that respondents are not commonly known by a disputed domain name when they are not authorized by a complainant to use it and no information in the respondent’s WHOIS information suggests otherwise. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the <augur.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent has no rights or legitimate interests in the <augur.com> domain name as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues in its Complaint as well as in its Additional Submission, that Respondent has made no use of the <augur.com> domain name. Complainant provides that the <augur.com> domain name resolves to a nonfunctional webpage and that Respondent demonstrates lack of intent to use the <augur.com> domain name. Complainant further suggests that the lack of content on the page resolving from the <augur.com> domain name may indicate Respondent’s intent to sell or solicit the disputed domain name and hide evidence of typosquatting. The Panel notes that the website resolving from the <augur.com> domain name most recently contains, “AUGUR©” and “Augur is coming soon,” as well as the notice to Internet users, “Please continue to check back for updates.” Previous panels have found that failure to make a demonstrable preparation to use a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent has no rights or legitimate interests in the <augur.com> domain name and does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶¶ 4(c)(i) and 4(c)(iii).
Complainant claims that Respondent has engaged in bad faith by soliciting the <augur.com> domain name for excessive out of pocket consideration. Complainant claims it received an unsolicited e-mail from the President of SuperNiche.com claiming to be “a leading domain name and website broker” who offered to sell the <augur.com> domain name for, “$75,000 or best offer.” Complainant also argues in its Complaint as well as in its supplemental submission that failure to make an active use of the <augur.com> domain name indicates respondents intent to sell the domain name. Previous panels have found that offering to sell a domain for an excessive out-of-pocket costs coupled with a respondent’s failure to make an active use of a domain name constitutes bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the respondent made no use of the domain name <icqguide.com> other than offering it for sale for $99,000); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000). The Panel therefore finds that Respondent’s failure to make an active use of the disputed domain name as well as Respondent’s specific offering price indicates bad faith pursuant to Policy ¶ 4(b)(i).
Complainant argues that Respondent attempts to deceive and confuse Internet users by misusing the © symbol by trying to infer that the mark was registered, which is usually indicated by the ® symbol. Complainant alleges in its Additional Submission, that Respondent’s lack of commercial use of the <augur.com> domain name for 9 or more years before attempting to sell it demonstrates lack of intent to use the disputed domain name for a legitimate business purpose. Complainant’s Additional Submission also argues that just because Respondent incorporated a business with a name reflecting the <augur.com> domain name has no bearing on whether or not the business used the domain name in offering goods or services. Previous panels have found bad faith when a respondent has not made a commercial use of a disputed domain name. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel therefore finds that Respondent has failed to make a commercial use of the <augur.com> domain name and has therefore registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Reverse Domain Name HiJacking
Since the Panel is of the view that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <augur.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 14, 2013
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