TechSmith Corporation v. Graeme Smith / Digital Tech Smith
Claim Number: FA1701001712912
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is Graeme Smith / Digital Tech Smith (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digitaltechsmith.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2017; the Forum received payment on January 17, 2017.
On January 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <digitaltechsmith.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 January 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2017 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@digitaltechsmith.com. Also on January 18, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
A. Complainant
TechSmith is the owner of the U.S. Federal Certificate of Registration for the mark TechSmith, U.S. Reg. Nos. 1,749,869, registered on February 2, 1993 as well as U.S. Reg. Nos. 2,320,170, 2,706,748, Canada Reg. No. TMA805932, EU Reg. Nos. 2068609and 8872161. TechSmith has also registered its famous mark “TECHSMITH” as follows: Brazil Reg. No. 902113313, Australia Reg. No. 1135487, China Reg. Nos. 5080144 and 508145, Japan Reg. No. 4997147, Korea Reg. No 4500192280000, and New Zealand- Reg. No 755148. TECHSMITH has and continues to use the mark TECHSMITH as a house mark for computer programs, computer consultation, computer design and programming for others; Computer software, namely, utility software for use in connection with a graphic based operating system which may be downloaded from a global computer network; and computer consultation in the nature of on-line technical support comprised of computer programming and design for others, and maintenance and updating of proprietary downloadable computer software; and its EUTM description is as follows: Computers, computer programs and computer software; parts and fittings for all the aforesaid goods, Computer services, computer design services, computer programming services, computer software design services; consultancy, advisory and information services relating to all the above services, and has done so in interstate commerce since at least as early as March 14, 1991.
TechSmith has successfully filed its Sections 8 & 15 Affidavits of Use and Incontestability with the U.S. Patent and Trademark Office for the mark TECHSMITH which were accepted and acknowledged; and TECHSMITH has successfully renewed its Registrations by timely filing its combined Sections 8 & 9 Renewals, that have also been accepted and acknowledged. TECHSMITH registered the domain nameTechSmith.com on March 8, 1995.
This Complaint is based on the following factual and legal grounds:
[a.] RESPONDENT’S DOMAIN NAME DIGITALTECHSMITH.COM IS ESSENTIALLY IDENTICAL AND/OR CONFUSINGLY SIMILAR TO TECHSMITH’S FEDERALLY REGISTERED MARK TECHSMITH. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Respondent is using the domain name <digitaltechsmith.com> but such use has been no earlier than October 21, 2016.
TechSmith has openly and continuously used its U.S. federally registered mark “TECHSMITH” as a computer programs, computer consultation, computer design and programming for others; computer software, namely, utility software for use in connection with a graphic based operating system which may be downloaded from a global computer network; and computer consultation in the nature of on-line technical support comprised of computer programming and design for others, and maintenance and updating of proprietary downloadable computer software, and its EU description is as follows: Computers, computer programs and computer software; parts and fittings for all the aforesaid goods, Computer services, computer design services, computer programming services, computer software design services; consultancy, advisory and information services relating to all the above services, as described in above in interstate commerce at least as early as March 14, 1991. Therefore, TechSmith has established its prior use and its exclusive nationwide and worldwide right to use its famous mark “TECHSMITH.”
TechSmith registered its domain name TECHSMITH.COM on March 8, 1995. Thus, TechSmith has also established its prior use and exclusive nationwide right to use its domain name/mark.
TechSmith does not allow or license unauthorized parties to use its marks as part of its domain names.
Given the above, the domain name <digitaltechsmith.com> itself is essentially identical and/or confusingly similar to TechSmith’s U.S. registered mark TECHSMITH based on the following additional grounds:
(i) Respondent’s domain name is essentially identical and/or confusingly similar to TechSmith’s registered mark “TECHSMITH” given the domain name in dispute is merely the TECHSMITH mark owned and registered by Complainant except for the addition of the descriptive/generic term “DIGITAL”, and the top level domain name “.com.” See TechSmith Corporation v. WAYNE DIXON / FIVE STAR IMPACT LLC, FA1511001647296 (FORUM December 14, 2015) finding that the at-issue <mediasnagit.com> domain name contains Complainant’s entire SNAGIT trademark prefixed with the generic term “media.” The domain name concludes with the top-level domain name “.com.” However, the trivial differences between Respondent’s domain name and Complainant’s SNAGIT trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <mediasnagit.com> domain name is confusingly similar to Complainant’s SNAGIT mark under Policy ¶4(a)(i) citing Am. Express Co. v. MustNeed.com, FA 257901 (FORUM June 7, 2004) (finding the respondent’s< amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)); see also TechSmith Corporation v. Dina Methoes / V&L Technologies, FA1508001632286 (FORUM September 22, 2015) where the panel found that Respondent’s disputed domain name <techsmithcoupon.com> is confusingly similar to Complainant’s mark TechSmith per Policy ¶4(a)(i); and see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (FORUM Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). See also TechSmith Corporation v. Linda Lucia, FA1301001479401 (FORUM February 28, 2013) finding that the at-issue domain name is merely the Snagit mark with the addition of the generic term “now” and the top level domain name “.com.” These distinctions between the at-issue domain name and Complainant’s trademark are ineffective in removing the two domain names from the realm of confusing similarity. Therefore, the Panel concluded that Respondent’s <snagitnow.com> domain name was confusingly similar to Complainant’s SNAGIT mark under Policy ¶4(a)(i) citing Hewlett-Packard Co. v. Jinsu Kim, FA 98012 (FORUM Sept. 5, 2001) (finding that the generic term “now” in the <hpnow.com> domain name made the domain name confusingly similar to the HP mark); and see also SPB Software House v. Pluto Domain Services Private Limited, FA0901001245355 (FORUM March 20, 2009) finding, the addition of the word “software” describes Complainant’s software development operations, which tends to heighten the confusing similarity citing Vance Int’l, Inc. v. Abend, FA 970871 (FORUM June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i). See also Hewlett-Packard Company and Hewlett- Packard Development Company, L.P. v. Surya Technologies c/o Manoj Kumar Allakattu, FA0708001059665 (FORUM October 2, 2007) finding that Respondent’s <hpsoftware.com> domain name is confusingly similar to Complainant’s long-established mark. Respondent’s disputed domain name contains Complainant’s HP mark and adds the term “software” as well as the generic top-level domain (“gTLD”) “.com.” Past panels have held that the addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (FORUM Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (FORUM Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As a result, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark for purposes of Policy ¶4(a)(i). See also Reese v. Morgan, FA 917029 (FORUM Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). See Pascua Yaqui Tribe v. Registrant, FAO050100040817 (FORUM March 8, 2005) citing Wal-mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO September 19, 2000) (finding that the failure for a complainant to register all possible domain names that surround the substantive mark does not hinder a complainant’s rights in the mark.).
Trademark owners are not required to create “libraries” of domain names in order to protect themselves. For consumers to buy things or gather information on the Internet, they take the easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with suffix “.com”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Circuit 2002). (Internet users searching for a company’s website often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by “.com”).
(ii) Respondent’s domain name fully incorporates the “TECHSMITH” mark and only deviates with the addition of the generic top-level domain name (e.g. “TLD”) “.com,” and the addition of the descriptive/generic term “DIGITAL.” The addition of “.com” and generic terms to TechSmith’s TECHSMITH mark does not distinguish the domain name pursuant to ¶(4)(a)(i). See UBS AG v. LaPorte Holdings, Inc., FA0501000397672 (FORUM February 21, 2005) citing Sony Kabushi Kaisa v. Inja, D2001409 (WIPO December 9, 2004) (finding that neither the addition of a descriptive word….nor the suffix “.com” detracts from the overall impression of the dominant part of the name, in each case namely the mark “Sony”). See also Doctors Signature Sales & Marketing Information Corp. d/b/a Life Force International v. The Life Force Center, FA0807001216435 (FORUM September 16, 2008) (finding that the respondent’s changes to the complainant’s mark Life Force by the addition of the generic term “Plan” and the generic top level domain “gTLD”) “.com” do not minimize or eliminate the resulting likelihood of confusion, and so the respondent’s <lifeforceplan.com> domain name is not sufficiently distinguished from Complainants’ mark Life Force pursuant to Policy ¶(4)(a)(i)). See also Haas Automation, Inc. V. NoKOutmma, FA100500132604 (FORUM July 14, 2010) (finding the domain name <usedcnchaas.com> is confusingly similar to the HAAS mark as it is well established that a domain name that contains a trademark in its entirety combined with generic terms is confusingly similar to the trademark).
(iii) There is no need for Respondent to usurp the trademark rights of TechSmith to accomplish its alleged goal. See State Farm Automobile Insurance Company v. Kyle Northway, 95404 (FORUM October 11, 2004). The use of the TECHSMITH trademark and domain name whether or not additional language, characters, or hyphens are added to the TECHSMITH mark, is confusingly similar to TECHSMITH trademark. The public could be mistakenly drawn to Respondent’s diverted site, links, and web pages by the confusingly similar domain name and any non-affiliation information would not be received until after the public had gone to that site. State Farm Automobile Insurance Company, Supra.
Thus, given that the domain <digitaltechsmith.com> itself is essentially identical and/or confusingly similar to TechSmith’s U.S. registered mark TECHSMITH, TechSmith has requested that Respondent immediately cease and desist any and all use of the domain name <digitaltechSmith.com> and any derivation of the same. As of the date of this Complaint, Respondent has failed to comply with TechSmith’s request forcing TechSmith to file this complaint.
[b.] RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST WITH RESPECT TO THE DOMAIN NAME DIGITALTECHSMITH.COM. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent has not rights or legitimate interest with respect to the domain name <digitaltechsmith.com> based on the following grounds:
Respondent’s registration of the <digitaltechsmith.com> domain name occurred well after the date TechSmith started using the mark “TECHSMITH” in the United States and throughout the world and in particular in the EU (e.g. Complainant’s date of first use being March 14, 1991 and Respondent’s date of first use being no earlier than October 21, 2016; and well after TechSmith registered its domain name (e.g. TechSmith registered the domain name TECHSMITH.COM on March 8, 1995. TechSmith was issued its first U.S. federal Certificate of Registration for the mark TECHMSITH on February 2, 1993. Moreover, TechSmith has not licensed or authorized Respondent in any way to use its mark TECHSMITH in the disputed domain.
Moreover, Respondent is not commonly known by <digitaltechsmith.com>. Respondent was not known by the domain name prior to the registration of the domain name given, that TechSmith used its mark TECHSMITH for over 25 years prior to Respondent’s registration of the disputed domain name; and TechSmith was also issued its federal U.S. Certificates of Registration for the mark TECHSMITH well prior to Respondent’s registration of the disputed domain name. See Sub-Zero, Inc. v. Corp Service / Subzero, Claim Number: FA1611001702433 (FORUM December 20, 2016) where the complainant alleged that the respondent has no rights or legitimate interests in the domain name. According to the complainant in that case, the respondent was not commonly known by the domain name, and the respondent is not a licensee of the complainant. The Panel noted in that case that despite the WHOIS information listing “Corp Service” as registrant and “Subzero” as registrant organization, and the domain name at issue being <subzero-servicio.com> the Panel found no basis in the available record to conclude that the respondent was commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii), citing Yoga Works, Inc. v. Arpita, FA 155461 (FORUM June 17, 2003) (finding that 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”). See also The Hackett Group, Inc. v. Brian Herns / The Hackett Group, Claim Number: FA1412001597465 (FORUM February 6, 2015) where complainant claimed that respondent is not commonly known by the <thehackettgroups.com> domain name and has never been licensed to use THE HACKETT GROUP in domain names. In that case “Brian Herns” of “The Hackett Group” was listed as the registrant of record for this domain name. The Panel found nothing in the record that suggested that respondent has ever been licensed to use complainant’s mark in domain names. The Panel found that respondent was neither commonly known as or licensed to use the mark in domain names, and therefore could not establish rights or legitimate interests under Policy ¶4(c)(ii), citing AOL LLC v. AIM Profiles, FA 964479 (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); St. Lawrence Univ. v. Nextnet Tech, FA 881234 (FORUM Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The Panel found there is no available evidence demonstrating that Respondent was in fact commonly known by the <thehackettgroups.com> domain name, and the Panel found that Respondent had no rights or legitimate interests with respect to Policy ¶4(c)(ii). See RMO, Inc. v. Burbridge, FA 103000096949 (FORUM May 16, 2001) interpreting Policy ¶4(c)(ii) (“to require a showing that one has been commonly known by the domain name prior to the registration of the domain name”).
In addition, see also Superior Growers Supply, Inc. v.HOMEHARVESTS.COM, FA0712001125171 (FORUM February 25, 2008) (finding the disputed domain name is being used to redirect Internet users to the <brecks.com> website and given that Complainant has asserted that Respondent has never been authorized or licensed to use the HOME HARVEST mark, the Respondent is not using the domain name in connection with a bona fide offering of goods and services nor is Respondent commonly known by the domain name). See State Farm Mutual Automobile Insurance Co. v. Douglas LaFaive, FA0008000095407 (FORUM September 27, 2000) (finding that the unauthorized providing of information and services under a mark owned by a third party cannot be said to be a bona fide offering of goods and services); See also Gallup, Inc. v. Amish Country Store, FA 96209 (FORUM January 23, 2001 (finding that Respondent did not have rights or a legitimate interest in a domain name when Respondent is not known by the mark).
Respondent may accomplish its alleged purpose of informing Internet users of tech support and migrating cloud solutions without the use of TechSmith’s mark TECHSMITH and its domain name.
Finally, Respondent fails to provide a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name. The website resolving from the domain name is inactive and displays merely a web site template created by the domain name Registrar GoDaddy.
In the alternative, if Respondent’s Site is deemed active, as in Coryn Group, Inc. v. Media Insight, FA 198959 (FORUM Dec. 5, 2003) Respondent is not using the domain name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent is using the domain name at issue to divert Internet users to a website that may offer services that competes with those offered by the complainant under its marks (e.g computer tech support and cloud solutions). Past panels have found that a respondent’s use of a disputed domain name to sell products and services that are in competition with the complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (FORUM Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii).
[c.] THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
The disputed domain name<digitaltechsmith.com> should be considered as having been registered and being used in bad faith based on the following grounds:
(i) Respondent had and does have actual notice of TechSmith’s registered mark TECHSMITH prior to registering the <digitaltechsmith.com domain name. Respondent’s prominent display of the TechSmith’s mark TECHSMITH with the descriptive term “Digital”, on the site resolving to the <digitaltechsmith.com> domain name, demonstrates that Respondent had actual knowledge of TechSmith mark TECHSMITH at the time Respondent registered the <digitaltechsmith.com> domain name. Thus, Respondent registered the domain name in a manner that constitutes bad faith registration under the UDRP Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (FORUM Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under the Policy after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about Complainant’s mark when it registered the subject domain name”).
(ii) In addition, providing false or inadequate contact information is further evidence of bad faith. See Cactus Restaurants Ltd. v. Web Master, FA0604000671297 (FORUM May 23, 2006) (inferring bad faith from, inter alia, inadequate or inoperative contact details). In this case Respondent merely indicates in his contact information London, UK which if not false is clearly inadequate which is evidence of bad faith registration. See Amazon Technologies, Inc. v. HUANRAN LEE, FA1612001708538 (FORUM December 28, 2016).
(iii) TechSmith contends that Respondent’s disputed domain name disrupts and competes with Complainant’s business. Previous panels have found evidence of bad faith pursuant to Policy ¶4(b)(iii) where a respondent registered and used a domain name that displayed goods and services similar to those offered by the complainant. See Instron Corp. v. Kaner, FA 768859 (FORUM Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). See Juniper Networks, Inc. v. Darshan Parmar / Juniper Technologies, FA1611001703133 ( FORUM December 26, 2016). Respondent is using the domain name in bad faith because the resolving website is used to compete with Complainant in a manner that is disruptive and done for the purpose of profiting from the creation of confusion regarding Complainant’s association with the domain name.
(iv) TechSmith further asserts that Respondent’s use of the disputed domain name <digitaltechsmith.com> is to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. TechSmith asserts that Respondent is attempting to profit from falsely suggesting that Complainant is affiliated with Respondent by offering computer program tech support and cloud related solutions. Past panels have held that a respondent’s use of a disputed domain name to host a website that offers goods and services similar to those offered by the complainant under its mark constitutes bad faith registration and use under Policy ¶4(b)(iv). EMVCO, LLC c/o Visa Holdings v. Sarah Rosenzweig / GetMyFreeEMV.com, FA1511001647292 (FORUM December 28, 2015)
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims it registered the TECHSMITH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,749,869, registered February 2, 1993) and in the EU (Re. No. 2068609, registered December 18, 2002), as well as numerous other countries around the world. Registration with the USPTO (or any other governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even where a respondent operates and/or resides in a different country. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that the complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.); see also Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding the complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶4(a)(i)). In this case, Respondent resides in London, which is within the European Union. Therefore, Complainant has demonstrable rights to its mark even where Respondent claims to operate. Complainant has established rights in the TECHSMITH mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <digitaltechsmith.com> is confusingly similar because it fully incorporates the TECHSMITH mark while adding the generic term “digital” at the beginning and the gTLD “.com” at the end. The addition of a generic term while incorporating an identical trademark in a domain name does not adequately distinguish it from Complainant’s mark. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in the domain name <digitaltechsmith.com>. Where there is no response, the WHOIS and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (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 WHOIS identifies “Graeme Smith” as registrant. There is no obvious connection between Respondent’s name and the domain name. Respondent is not commonly known by <digitaltechsmith.com> under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services and is not making a noncommercial fair use because the domain name diverts Internet users to a website offering competing services. Where a respondent incorporates a complainant’s marks in its resolving website and offers services similar to those of the complainant, no rights or legitimate interests can be found. See General Motors LLC v. MIKE LEE, FA 1659965 (FORUM March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Respondent clearly incorporated Complainant’s mark in full and offers competing services. Respondent has made no bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii) .
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent disrupts its business and competes with Complainant by using Complainant’s mark entirely while displaying competing goods and services. Certainly Respondent’s services compete with Complainant’s services. This constitutes bad faith registration and use under Policy ¶4(b)(iii). Complainant claims its business is disrupted. Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (FORUM July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iii).”). Respondent does not dispute the claim. Respondent’s use of Complainant’s mark in a domain name to offer competing services constitutes bad faith registration and use under Policy ¶4(b)(iii).
Complainant claims Respondent intentionally used Complainant’s mark to commercially benefit by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website under Policy ¶4(b)(iv). There are several elements which must be met: Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. This Panel has already found there is a likelihood of confusion between the domain name and Complainant’s mark. Respondent is certainly using the domain name deliberately. It is reasonable to presume Respondent wants to make a profit in its business. This constitutes bad faith registration and use under the facts of this case. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”). Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent registered and used <digitaltechsmith.com> in bad faith because Respondent had actual knowledge of Complainant’s mark. This Panel is not convinced based upon the evidence before it. Plaintiff does not have a stylized logo Respondent is copying. The look and feel of Respondent’s web site is not similar enough to convince this Panel Respondent knew about Complainant’s mark.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <digitaltechsmith.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, February 21, 2017
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