Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd
Claim Number: FA1402001546283
Complainant is Astute, Inc. (“Complainant”), represented by Robert J. Morgan of Porter, Wright, Morris & Arthur LLP, Ohio, USA. Respondent is Raviprasath C / Astute Solution Pvt Ltd (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <astutesolution.com>, registered with GODADDY.COM, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2014; the National Arbitration Forum received payment on February 28, 2014.
On March 3, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <astutesolution.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 March 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@astutesolution.com. Also on March 3, 2014, 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.
Respondent submitted Request for Extension for its response on March 25, 2014. This request was non-compliant as it was not received in a timely manner nor did it include the required fee.
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent’s Contentions
Respondent failed to submit a timely Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
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.”).
Complainant states that it has used the ASTUTE SOLUTIONS mark for over a decade in connection with computer consultation services and computer software development. Complainant has used the undisputed <astutesolutions.com> domain name since April 24, 1997, to market its business over the Internet. Complainant has registered the ASTUTE SOLUTIONS mark with both the USPTO (e.g. Reg. No. 2,610,616 registered August 20, 2002) and with the OHIM (e.g., Reg. No. 6,292,288 registered September 4, 2008). The Panel finds that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities”).
Complainant further argues that Respondent’s <astutesolution.com> domain name is confusingly similar to the ASTUTE SOLUTIONS mark as it features the removal of the plural “s” in the term “solutions.” Complainant argues that the “.com” gTLD is not relevant. The Panel agrees as the removal of a single “s,” the removal of the mark’s spacing, and the addition of a gTLD are not sufficient differentiations under Policy ¶ 4(a)(i). See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Respondent is “Astute Solution Pvt Ltd” according to the WHOIS information and correspondence submitted by Respondent. Prior panels have determined that Policy ¶ 4(c)(ii) requires more than the mere use of a confusingly similar domain name as a business name. See PetroSkills, LLC v. Domain Privacy Service, FA1302001484744 (Nat. Arb. Forum April 5, 2013)(finding that Policy ¶ 4(c)(ii) “does not extend to a respondent who registers and uses a domain name or mark of another with intent to trade on the fame or reputation of that other, even if the respondent is able to register that name as a trade or business entity name”). The Panel agrees and finds that Respondent is not commonly known by the <astutesolution.com> domain name as intended under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent uses the <astutesolution.com> domain name to pass itself off as Complainant in a manner that is competitive to Complainant. Complainant argues that the domain name’s website illustrates that Respondent uses the domain name to target the same class of consumers that might be interested in Complainant’s ASTUTE SOLUTIONS services. The Panel notes that the domain name’s resolving website offers consulting, web development, and outsourcing services. In Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) the panel determined that the content of the disputed domain name’s website suggested that the respondent sought to pass itself off as the complainant, and thus the respondent could not be afforded the protections of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). The Panel agrees that Respondent uses the <astutesolution.com> domain name to pass itself off as Complainant and as such has failed to establish a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant claims that Respondent’s use of the <astutesolution.com> domain name falls within the Policy ¶ 4(b)(iv) category of bad faith through the likelihood of confusion. Complainant suggests that Respondent profits each time a confused Internet user pays for Respondent’s services under the false belief that Respondent is a subsidiary, affiliate, or branch of Complainant. The Panel notes that Respondent is offering consulting and web development services through the <astutesolution.com> domain name. The Panel finds that Respondent is generating revenue at the expense of Internet users’ confusion and agrees that Respondent has acted in Policy ¶ 4(b)(iv) bad faith. See, e.g., Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant also argues that Respondent had to have been aware of Complainant’s rights in the ASTUTE SOLUTIONS mark prior to domain name registration. Complainant states it is unlikely Respondent would otherwise use a confusingly similar domain name to market the same types of services as those provided under the ASTUTE SOLUTIONS mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <astutesolution.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 9, 2014
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