DSN Software, Inc. v. Fishka CO. a/k/a
Vitaliy Ribalchenko
Claim
Number: FA0306000161566
Complainant is DSN Software, Inc., Centralia, WA
(“Complainant”) represented by Martin L.
Laurence. Respondent is Vitaliy Ribalchenko Fishka CO. a/k/a Vitaliy Ribalchenko, Denver, CO
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dsnsoftware.com>, registered with Go
Daddy Software, Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 4, 2003; the Forum received a hard copy of the Complaint
on June 6, 2003.
On
June 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <dsnsoftware.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
June 11, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 1, 2003 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@ dsnsoftware.com by e-mail.
On
June 13, 2003, Respondent submitted an email which did not comply with ¶ 5 of
the Rules of Procedure and did not advance any substantive arguments upon which
relief could be granted.
Having
received no formal Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 11, 2003, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
Forum appointed Louis E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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:
1. Respondent’s <dsnsoftware.com>
domain name is confusingly similar to Complainant’s DSN mark.
2. Respondent does not have any rights or
legitimate interests in the <dsnsoftware.com> domain name.
3. Respondent registered and used the <dsnsoftware.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds multiple registrations for the DSN mark on the Principal Register including
U.S. Patent and Trademark Office Reg. No. 2,259,275 registered on July 6, 1999
and Reg. No. 2,332,469 registered on March 21, 2000.
Complainant has
been using the DSN mark, with or without various suffixes, for its computer
products and services including computer programs, systems and hardware since
July 1, 1989.
Respondent
registered the <dsnsoftware.com>
domain name on March 21, 2003.
Respondent is using the <dsnsoftware.com> domain name to
sell search engine placements for $9,99 (presumably $9.99) and advertises
itself as a resource for promoting websites.
On the website
assoicated with the disputed domain name, Respondent promotes itself as a
search engine placement service. In
addition, Respondent identifies itself as DSN Software.
In an informal
submission, Respondent recognized that Complainant has registered the DSN mark
and admitted that it will have to get a new domain name.
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.
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 has
established rights in the DSN mark through registration with the United States
Patent and Trademark Office and through continuous use in commerce. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning”); see also BroadcastAmerica.com,
Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant
has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark
to identify Complainant as the source of broadcast services over the Internet,
and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
The <dsnsoftware.com>
domain name is confusingly similar to Complainant’s DSN mark. Respondent’s addition of the generic terms,
“software” and “com” does not sufficiently change the domain name so as to distinguish it from Complainant’s mark. See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding the domain name <mannbrothers.com> confusingly similar to
Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who
may believe they are doing business with Complainant or with an entity whose services
are endorsed by, sponsored by, or affiliated with Complainant; hence,
satisfying the confusing similarity requirement”); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc
Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood
of confusion is further increased by the fact that Respondent and [Complainant]
operate within the same industry”).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent did
not submit a formal Response in this proceeding. In an informal submission to the Panel, Respondent did not
contest Complainant’s allegations. In
fact, Respondent admitted that it would need to get a new domain name because
Complainant had registered the DSN mark. Thus, Respondent’s admission in its informal submission is
evidence that it lacks legitimate interests or rights in the disputed domain
name. See Taco Bell Corp. v. Tango Bella, D2000-1229 (WIPO Dec. 12, 2000)
(transferring the domain name where Respondent agreed that it had no rights in
the domain name); see also Global
Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001)
(finding Respondent’s failure to address Complainant’s allegations coupled with
its willingness to transfer the names is evidence of bad faith registration and
use).
There is no
evidence that Respondent is commonly known by the <dsnsoftware.com>
domain name. The name given in the
WHOIS contact information for the disputed domain name supports the Panel’s
reasonable inference that Respondent is not commonly known by the <dsnsoftware.com>
domain name. 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark).
Respondent did
not use the <dsnsoftware.com> domain name for a bona fide offering
of goods or services or for a legitimate noncommercial or fair use. Respondent is taking advantage of
Complainant’s mark by attracting Internet users who are searching for computer
related products and services to its site by using the DSN mark. At the website associated with the disputed
domain name, Respondent is charging consumers $9.99 for its search engine
placement services, which are similar to services offered by Complainant, but
are unrelated to Complainant. Thus, the
Panel finds that Respondent’s use of Complainant’s mark to promote a commercial
website that is unrelated to Complainant does not establish a bona fide
offering of goods or services under Policy ¶¶ 4(c)(i) and (iii). See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (inferring that Respondent registered the domain name
<householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK
mark, in hopes of attracting Complainant’s customers, thus finding no rights or
legitimate interests); see also Telstra
Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding the
fact that the word TELSTRA appears to be an invented word, and as such is not
one traders would legitimately choose unless seeking to create an impression of
an association with Complainant,
demonstrate that Respondent lacks rights or legitimate interests in the domain
name); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is trying to attract Internet users to the <dsnsoftware.com> domain name by creating a likelihood of confusion
with Complainant’s mark as to the source or sponsorship of Respondent’s
website. Respondent is using
Complainant’s mark to appear to be offering services that are similar to
services offered by Complainant. In
addition, Respondent is commercially benefiting from the unauthorized use of
Complainant’s mark when it charges $9.99 for its services. Thus, Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Kmart v. Kahn,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under ICANN Policy, the Panel
concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <dsnsoftware.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
July 25, 2003
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