DiscoverOrg, LLC v. ENOCH RAJ KANDASWAMY / DISCOVER ORGANIZATIONS LLC
Claim Number: FA1509001637471
Complainant is DiscoverOrg, LLC (“Complainant”), Washington, USA. Respondent is ENOCH RAJ KANDASWAMY / DISCOVER ORGANIZATIONS LLC (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discoverorgs.net>, registered with FastDomain 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2015; the Forum received payment on September 11, 2015.
On September 14, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <discoverorgs.net> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 September 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2015 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@discoverorgs.net. Also on September 17, 2015, 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 September 17, 2015, the Forum received email correspondence from Respondent which was not a proper response to the complaint.
Having received no proper response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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" 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 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
Complainant owns the DISCOVERORG mark through a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,698,214, filed January 2, 2014, registered March 10, 2015) that was assigned to Complainant on May 29, 2015. Complainant uses the DISCOVERORG mark in connection with the commercial exploitation of Complainant’s database of business-to-business contact information, company profiles including organizational charts and technology information and predictive purchase intent data. The disputed domain name is confusingly similar to the DISCOVERORG mark, as Respondent has simply attached the letter “s” to the mark and the generic top-level domain (“gTLD”) “.net.”
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as demonstrated by the available WHOIS information for the disputed domain name. Further, Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, because Respondent uses the disputed domain name to offer products and services similar to and in competition with Complainant’s business.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name to offer products and services similar to and in competition with Complainant’s business disrupts Complainant’s business and is bad faith under Policy ¶ 4(b)(iii). Additionally, due to the fame and continuous use of the mark by Complainant, Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the mark when registering the disputed domain name.
Respondent
Respondent did not submit a proper Response in this proceeding.
The Panel finds Complainant is entitled to the requested relief of transfer of the <discoverorgs.net> 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."
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 owns the DISCOVERORG mark through a trademark registration with the USPTO that was assigned to Complainant on May 29, 2015 (Reg. No. 4,698,214, filed January 2, 2014, registered March 10, 2015). Complainant uses the DISCOVERORG mark in connection with the commercial exploitation of Complainant’s database of business-to-business contact information, company profiles including organizational charts and technology information and predictive purchase intent data. Panels have found trademark registrations are sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Further, past panels have found that rights in a mark date back to a mark’s filing date. 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”). Therefore, the Panel finds Complainant’s rights in the DISCOVERORG mark date back to January 2, 2014.
Complainant contends that the <discoverorgs.net> domain name is confusingly similar to the DISCOVERORG mark as the domain merely adds an “s” to the mark, along with the gTLD “.net.” Panels have founds that such alterations do not distinguish a domain name from a registered mark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel finds that the <discoverorgs.net> domain name is confusingly similar to the DISCOVERORG mark under Policy ¶ 4(a)(i).
Complainant has proved 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.”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant asserts Respondent is not commonly known by the disputed domain name. The WHOIS lists the registrant of record as “ENOCH RAJ KANDASWAMY / DISCOVER ORGANIZATIONS LLC.” Based on the WHOIS record, Respondent may be commonly known by the disputed domain name, however, Respondent has not submitted any evidence to support such a finding. In light of this deficiency, the Panel finds that the WHOIS alone is not dispositive. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Therefore, the Panel finds that Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to offer products and services similar to and in competition with Complainant’s business. Panels have found competition with a complainant to be demonstrative of neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iii) rights or legitimate interests. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel finds that Respondent’s use of the disputed domain name competes with Complainant business, and therefore finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent has registered and is using the disputed domain name in bad faith. Complainant states that Respondent’s use of the disputed domain name to offer products and services similar to and in competition with Complainant’s business disrupts Complainant’s business and is evidence of bad faith use under Policy ¶ 4(b)(iii). Past panels have founds that where a respondent utilizes a disputed domain name to offer goods or services in direct competition with a complainant, such use may be in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent has registered and used the disputed domain name with the intent to divert Internet users and thereby disrupt Complainant’s legitimate business, and finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant contends that in light of the fame and notoriety of Complainant's DISCOVERORG mark, it is inconceivable that Respondent could have registered the <discoverorgs.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved 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 <discoverorgs.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 21, 2015
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