Appian Corporation v. Wellman Yu
Claim Number: FA1803001774926
Complainant is Appian Corporation (“Complainant”), represented by Brad R. Newberg of McGuireWoods LLP, Virginia, USA. Respondent is Wellman Yu (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <appianlife.com>, registered with NameCheap, Inc.
The undersigned certifies he 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 March 8, 2018; the Forum received payment on March 8, 2018.
On March 8, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <appianlife.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2018 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@appianlife.com. Also on March 12, 2018, 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.
A timely Response was received and determined to be complete on April 2, 2018.
On April 4, 2018, 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.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information. This Complaint is based on registered and common law trademarks and service marks owned by Complainant (the “APPIAN Mark” and “APPIANLIFE Mark”, collectively referred to herein as the “APPIAN Marks”), outlined in the Complaint.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
1. Complainant conducts its business of providing a low-code software application development platform under its APPIAN Marks both in the United States and internationally. Complainant’s platform enables companies to write unique, complex software. Complainant’s goods and services, offered under the APPIAN Mark, are used by millions of people. Independent research firms and industry experts have recognized Complainant as a leader in software development and, most recently, its CEO was recognized as a “2017 Tech Titan” by Washingtonian Magazine due to his work growing Appian into a large industry leader. From 2014 to 2016, Complainant reported total revenue in excess of three hundred (300,000,000) million U.S. dollars. Copies of news articles and press releases showing industry reviews of Complainant and Complainant’s goods and services were provided with the complaint.
2. Complainant has established rights in its APPIAN Mark through the Complainant’s use of such mark throughout the world, as well as through the registration of such mark with agencies such as the United States Patent and Trademark Office (the “PTO”) and other international trademark offices. True and correct copies of the official records pertaining to these registrations were provided with the Complaint. The APPIAN Mark is in full force and effect and has been since at least the respective dates of registration, and is therefore conclusive evidence of the validity of the APPIAN Mark, of Complainant’s registration and ownership of the APPIAN Mark, and of Complainant’s exclusive right to use the APPIAN Mark.
3. Complainant uses and enjoys common law rights in the trademark and service mark APPIANLIFE. Examples of Complainant’s uses include advertising its goods and services on social media webpages, including Instagram and LinkedIn.
4. Complainant also owns several domain names that incorporate the APPIAN Mark, including, for example, <appian.com>, <appian.de> and <appian.it>, and from which Complainant advertises and offers its goods and services.
5. The Domain is identical to the APPIAN Marks as it fully incorporates the APPIAN Marks in its entirety. Expedia Inc. and Hotels.com L.P. v. Arabia Horizons Tours LLC, Case No. DAE2014-0005 (WIPO 2014) (in finding that <expedia.co.ae> is confusingly similar to EXPEDIA, the panel noted “the test of identity or confusing similarity is a standing requirement with a relatively low threshold”). In addition to incorporating the full APPIANLIFE Mark in its entirety, the Domain also subsumes the APPIAN Mark. The mere addition of the generic word “life” to Complainant’s registered APPIAN Mark does not reduce the likelihood of confusion. Victoria’s Secret et al v. Powerbiz, NAF Case No. FA0101000096497 (Forum Feb 27, 2001) (finding the domain name “victorias-secret-forever.com” confusingly similar to complainant’s VICTORIA’S SECRET mark) (citing See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding the domain name “quixtar-sign-up.com” confusingly similar to complainant’s mark, QUIXTAR)). In fact, the addition of the generic word “life” only increases the likelihood that consumers will see the Domain and falsely believe that there is a connection between the Domain and Complainant. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark). The dominant part of the Domain is Complainant’s APPIAN Mark. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, Case No. D2000-1409 (WIPO 2000) (finding the domains dreamsony.com, sonymode.com, sonymodel.com and others confusingly similar to complainant’s SONY trademarks). The only differentiating element from Complainant’s APPIAN Marks is the gTLD, and it is well settled that adding a gTLD is irrelevant in distinguishing a Domain from a mark. Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶4(a)(i) analysis, as a top-level domain is required of all domain names.”); Arthur Guinness Son & Co. (Dublin) Ltd. V. Dejan Macesic, Case No. D2000-1698) (WIPO 2001) (“It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”). The significant portion of the Domain for purposes of this analysis is identical to the APPIAN Mark and APPIANLIFE Mark, letter-by-letter.
6. The Domain is therefore identical and confusingly similar to the APPIAN Marks. Accordingly, the requirement of Section 4(a) of the UDRP is satisfied.
[b.] The Respondent has no rights or legitimate interests in respect of the domain name.
1. Since its formation in 1999, Complainant has been in the business of offering a software development platform that enables organizations, both in the United States and worldwide, to develop various applications. Complainant’s primary software offerings include low-code development platforms, case management software, business process management and platform-as-a service. The company provides, and has provided since at least as early as 2006, its product and service offerings to businesses across a variety of industries under the APPIAN Mark. Complainant is extremely well-known in the technology industry. Upon information and belief, Respondent has no rights or legitimate interest in the Domain.
2. Although there is little publicly available information regarding Respondent, Respondent’s business evidently involves registering a domain name that incorporates Complainant’s APPIAN Marks in connection with goods and services that compete with Complainant’s goods and services. Complainant’s use of the APPIAN Mark for its goods and services since 1999 predates Respondent’s ownership of the Domain. Complainant has never granted Respondent any license or other rights to use the APPIAN Marks in commerce for any purpose. Nothing in the WhoIs record indicates that the Respondent is commonly known by the disputed domain name.
3. Respondent, trading on Complainant’s goodwill, is offering almost identical goods and services related to the development of software and programming. Respondent’s webpage states that it consists of “two ambitious individuals who strive to build entertaining applications that are fun, entertaining, and creative.” Thus, Complainant and Respondent are operating in the same field of development of software and programming. It is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use under the Policy for Respondent to use a virtually identical domain on a website offering the sale of overlapping products and services. See Abbott Laboratories v. United Worldwide Express Co., Ltd., Case No. D2004-0088 (WIPO 2004) (citing Reed Elsevier, Inc. et. Al v. Ulexis a/k/a Law firm, FA97684 (Forum August 31, 2001) (finding no legitimate interest when respondent used the disputed domain name to offer similar/related services and to divert potential customers to its competing website); Reed Elsevier, Inc. et al v. Carlos M. Alvarez d/b/a IT Lexis, FA 982498 (Forum August 20, 2001) (finding respondent’s use of the domain name to offer competing services in same general field as complainant not to constitute a bona fide offering of goods and services under the UDRP); MBS Computers Ltd. v. Workman, FA 96632 (Forum March 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)).
4. For the foregoing reasons, Complainant submits that Respondent has no rights or legitimate interests in the Domain. Respondent is therefore engaging in a textbook case of cybersquatting in an attempt to profit of the goodwill Complainant created in the APPIAN Marks and to disrupt Complainant’s business.
[c.] The domain name was registered and is being used in bad faith.
1. The choice of a Domain incorporating a distinctive trademark that is widely known in the industry, especially to sell competing products, in the absence of any indication of rights or legitimate interests, is itself indicative of bad faith registration. AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001 0289 (April 24, 2001) (finding bad faith use and registration where Respondent used confusingly similar domain name to sell competing products).
2. Respondent should have known that Respondent’s registration would be identical and confusingly similar to Complainant’s APPIAN Marks. Given the global reach of the Internet, the ease of obtaining instantaneous results in search engines and the fact that Complainant is widely known in Respondent’s industry, Respondent cannot credibly claim to have been unaware of Complainant’s registration for <appian.com> and related trademark rights in the APPIAN Marks. SembCorp Industries Ltd. v. Hu Huan Xin, Case No. D2001-1092 (WIPO 2001). Complainant’s APPIAN Marks are highly distinctive in nature and well known in the tech industry, which supports an inference that Respondent, the junior user of an identical mark in the same industry, knew or should have known of Complainant’s Rights. Indeed, Respondent’s webpage appearing on the Domain indicates that Respondent is fully aware of Complainant. Respondent has included in the webpage appearing on the Domain, a hyperlink to Complainant’s Facebook page, directing Internet users to Complainant’s goods and services and implying an affiliation with Complainant, which does not exist. Therefore, Respondent’s registration of the Domain was clearly in bad faith.
3. Respondent is a competitor of Complainant and is diverting Internet traffic to a website on which the Respondent promotes its own products and services. By intentionally registering and using a domain name that appropriates the Complainant’s APPIAN Marks, Respondent is attempting to create Internet user confusion and ultimately disrupt Complainant’s business for Respondent’s own commercial gain. Respondent is intentionally using the Domain to create a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of the Domain. Such registration and use constitutes bad faith. H-D Michigan, Inc. v. TT&R et al., FA00126650 (through use of <harleydavidsonsrus.com> domain name, “respondent used complainant's mark to attract motorcycle buyers to its own website and created a strong likelihood of confusion as to whether respondent had any affiliation with complainant. These actions violate Policy paragraph 4(b)(iv).”). News West Publishing, Inc., d/b/a Laughlin Entertainer and LaughlinEntertainer.com v. Thane O'Brien, FA1007001333948 (Forum Aug. 24, 2010) (finding use of a confusingly similar domain name to divert Internet users seeking complainant’s business to respondent’s competing website disrupted complainant’s business and qualified as bad faith pursuant to Policy ¶4(b)(iii)). By registering and using the Domain, which is nearly identical to Complaint’s distinctive APPIAN Marks, in connection with offering software development services, Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant, an industry leader in software development.
4. For the reasons listed above, the Domain was registered and is being used in bad faith.
B. Respondent
7. Facts pertinent to the dispute.
Appianlife.com domain was registered on Jan 9, 2012 the name was influenced by two elements: Appian Way (The Appian Way was one of the earliest and strategically most important Roman roads of the ancient republic) and consist of three letter prefixes “app”.
Domains with the word “app” appears to be ranked #146 out of 5000 most frequently used Domain Name Prefixes and Suffixes. In addition, domains that end with the word “life” per leandomainsearch.com, “life is the 13th most popular topic on the internet by domain count.” Also a simple google search showing the word “life” domains, reveals more than 7 million results.
In addition, there are several website domains not related to Complainant are composed with the first word “Appian,” which is dominant component of their trading name.
www.appianway.com www.appianroad.com www.appianvc.com www.appianengineers.com www.appiandigital.com www.appiantechnologies.co.uk
Complainant claims on its mark bears no dominance to Respondent domain name. Respondent domain is uniquely of its own, its color scheme, logo design, and layout bears no resemblance to Complainants domain/mark. Also, to point out Respondent logo there is a separation between Appian and Life, where there is no existence of any spaces under Domain label syntax rule. Respondent is not aware of any such confusion.
In addition, there are other Active trademarks that bears the context “Appian” owned other than the Complainant.
Based on the above evidence Respondent bears no confusion to Complainant Mark.
[b] Respondent rights or legitimate interests in respect of the domain name(s) that
is/are the subject of the complaint.
Respondent has been operating under “Appian Life” Corp which is the same domain name it was registered in.
In addition, Respondent goods are not related to any B2B which bears no similarity of good and services that compete nor have any relationship with Complainant.
Respondent develops its own software through Windows Application such as “Penscreen” and a Mobile Application which is in development. Respondent Domain markets its own products and Respondent domain is uniquely of its own, its color scheme, logo design, and layout bears no resemblance to Complainants domain/mark. Respondent develops its own application ideas and does not work with any companies nor offer any overlapping products/services.
With the above responses, it becomes evident that Respondents have rights and interest to its own domain name. Respondent has not intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with any mark of Complainant under Paragraph 4(b)(iv) of the Policy. There is no evidence that Respondent’s use of the Domain Name intentionally attempts to attract Internet users for commercial gain.
[c.] The Domain Name was not registered in bad faith.
Respondent is operating as Corp under Appian Life. Respondent creates software which is related to B2C channels. Respondent develops its own software through Windows Application such as “Penscreen” and a Mobile Application which is in development. Respondent Domain Website markets their own products and company and makes no reference nor similarities with Complainant. Respondent does not offer or sell any BPM management software. Complainant is based on a belief and assumption that Respondent are selling competing products, but in general it’s a comparison of apples to oranges.
Complaint Appian trademark was register in Oct 16. 2012. Respondent Domain “AppianLife.com” was created on 1.9.2012 which is 9 months prior to their trademark. Complainant offers no evidence that is commonly known by anything prior to 2017 other than its name “Appian” (which is not identical to the Domain Name being in dispute. Respondent registered the disputed domain name several months prior to Complainant’s claimed date of first use / registered of its mark. Complainant must therefore have been aware that Respondent cannot have registered the disputed domain name in bad faith, since respondent cannot possibly have known of Complainant’s as-yet-nonexistent claim to the mark. Also See Reid v. Chao, FA 154587 (Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel) Complainant belief of “extremely well-known in the technology industry” is based on opinion and not evidence.
In addition, Respondent Social Media Page www.facebook.com/appianlife was active prior to 2017 which is several years later from Complainant use of such similar name on social media. Respondent had register social media page originally after it was taken away from Respondent address on Facebook by Complainant registering in 2017 (first post in 2017). Complainant could also have registered through potential Facebook validation loophole, by allowing similar names to be registered by new registrants, therefore Respondent no longer has the registered social media page under Facebook. Respondent first post as you can see from was in May 18, 2014 vs Complainant post in 2017. The Respondent believes that this notice of complaint to the Forum, appears to be bad faith of the complainant to take control of respondent domain.
C. Additional Submissions
Complainant hereby responds to the statements and allegations of the Complaint and respectfully requests the Panelist consider the following statements and documents:
[a.] The Response fails to overcome a finding that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
8. Respondent has described in Paragraph 5(a) the supposed existence of a number of domains containing the 3-letter term “APP”. The fact that other domains might contain the 3 letters “APP” is irrelevant to the analysis of whether the disputed domain is confusingly similar. Complainant’s trademark and the domain in dispute involve the use of the identical term APPIAN (and APPIAN LIFE), not APP. Complainant’s APPIAN Mark is strong (and arbitrary). Respondent’s use of the identical term is likely to cause anyone visiting the disputed domain, certainly at least initially, to believe the site is maintained by Complainant.
9. Respondent has identified six website domains not related to Complainant or Respondent that contain the term “Appian”. The existence of these domains is irrelevant to an analysis of whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights. The existence of third party registrations cannot justify the registration of a mark that is so similar that it creates a likelihood of confusion, mistake or deception. All that is relevant to the analysis under paragraph 4(a)(i) of the Policy is that Respondent has adopted a domain name that is identical to Complainant’s APPIAN LIFE trademark (which was raised in the Complaint and is not addressed in the Response) and confusingly similar to and containing the entirety of the APPIAN trademark, in which Appian has superior trademark rights.
10. Finally, Respondent argues that the Respondent’s website layout, color scheme and logo is distinct from Complainant’s trademarks. Such arguments, for the purpose of paragraph 4(a)(i) of the Policy , are irrelevant to the analysis of whether the disputed domain is confusingly similar to a trademark in which Complainant has rights. When analyzing confusion, it is the domain name that must be considered, not the content on the webpages. True Value Company v. True Value Services Inc., FA1108001404573 (Forum September 28, 2011) (finding “Respondent’s contention that its claimed mark and Complainant’s mark differ in font style and color is irrelevant, because domain names under consideration in a UDRP do not possess distinctive fonts or colors.”)
[b.] The Response confirms that Respondent does not have rights or legitimate interests in respect of the domain name.
5. Respondent has submitted as “Respn Annex 3,” evidence of a business entity registered in the state of California on March 3, 2014 with Respondent listed as the agent for service of process. This information is not sufficient to establish a connection between Respondent and the purported business entity and it is certainly not sufficient to establish that the purported entity is a legitimate business. Further, a state corporate registration is not a legitimate interest or right in the term APPIAN as a trademark. MIS Quality Management Corp. v. wei cheng yong, FA1312001536778 (Forum Feb. 13, 2014) (finding “[t]he mere fact of having incorporated, in 2011, a company in Hong Kong under the name Moody Investment Corporation Ltd does not give rise to any trade mark rights, nor does it give rise to any rights or legitimate interests in the Domain Names, particularly in circumstances where the Hong Kong company’s name is clearly confusingly similar to the Trade Mark”). Also, Respondent’s evidence of incorporation shows that the corporate entity was registered two years after registration of the Domain. Panels have held that “in order to have rights or legitimate interests under the ‘commonly known’ provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name is issue.” Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Forum Jan. 4, 2008) (emphasis added). Respondent’s evidence of the California incorporation in 2014, two years after registration of the disputed domain, is not sufficient to show that Respondent was commonly known by the disputed domain prior to registration of the disputed domain and thus does not show a legitimate interest.
6. Even if the state registration were relevant, Complainant filed for its U.S. trademark registration for trademark protection of its APPIAN Mark on January 19, 2012, which itself was many years after its APPIAN Mark became famous. Complainant’s trademark filing occurred before the disputed domain was registered and over two years before the identified California business entity was registered in California. Complainant’s prior federal filing put Respondent on constructive notice of Complainant’s rights.
7. Respondent has not submitted a reasonable explanation for the selection of the term APPIAN in the disputed domain. Complainant’s explanation (that “Appian” was the name of a historic road) does not demonstrate that the term has an ordinary dictionary meaning with descriptive significance to Complainant’s services, and thus the explanation does not illustrate any legitimate rights or interest in the term.
8. There is no good-faith plausible explanation in the Response for Respondent’s conduct. As both Complainant and Respondent are offering software development services, contrary to Respondent’s statement, the services clearly compete. Respondent is benefitting from the likelihood of confusion with Complainant created by the disputed domain. It is reasonable to conclude that Respondent’s use intentionally trades on the goodwill of another and cannot constitute a "bona fide" offering of goods or services.
9. Respondent states that the disputed domain was “created on 1.9.12”. Respondent, however, has failed to submit evidence showing that the disputed domain was even in use prior to 2014 with active content. Instead, Internet Archive Wayback Machine evidence suggests that the domain was dormant until 2014. The Panel has found that if there is no active use, a respondent cannot establish rights or legitimate interests under Policy ¶4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name).
10. Complainant disputes and the evidence is contrary to Respondent’s statement that he “has not intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Respondent” with Respondent. As evidenced in the Annexes to the Complaint, Complainant filed for U.S. trademark protection in 2012 and claimed a date of first use of 2006. In fact, as stated in the Complaint, Complainant’s trademark rights date back to 1999. Complainant has attached as Annex B, a press release showing that Gartner, Inc., a research and advisory firm in the field of information technology, recognized Complainant, under its APPIAN Mark, as a “Leader” in the market for Business Process Management as early as 2006-2007. Complainant has attached as Annex C an article from 2003 describing 1.2 million users of Complainant’s software under the APPIAN Mark (in 2003, almost a decade before the supposed creation of the disputed domain). Such evidence supports Complainant’s previously submitted statements that its APPIAN Mark was extremely well known before Respondent registered in the disputed domain. Respondent almost certainly was aware of Complainant by 2012 and it strains credibility for Respondent to claim otherwise.
[c.] The Response confirms that the domain name was registered and is being used in bad faith.
5. Respondent has incorrectly stated Complainant’s claimed date of first use of its APPIAN Mark in the Response, stating, “Respondent registered the disputed domain name several months prior to Complainant’s claimed date of first use / registered of its mark.” As evidenced by Complainant’s registration certificate attached as an Annex to the Complaint, Complainant claimed a date of first use of June 2006, and has submitted evidence attached hereto that its trademark rights date back to 1999. In fact, as described above and in the evidence, there were millions of users of Complainant’s software under the APPIAN Mark and Complainant was recognized as a leader in its field well before the disputed domain was created. Respondent knew, or should have known of Complainant’s rights. He further could have ascertained the status of such rights by searching United State Patent and Trademark Office records, but Respondent failed to do so. Respondent had either actual and/or constructive knowledge of Complainant’s developed goodwill and customer loyalty.
6. Respondent has incorrectly stated that it “cannot possibly have known of Complainant’s as-yet-nonexistent claim to the mark.” It is quite unlikely (truly, impossible) that Respondent, who operates in the same field of software development as Complainant and has access to the Internet, was unaware of the Complainant offerings and its famous APPIAN Mark. As shown in Complainant’s previously submitted evidence and additional industry evidence submitted herein, Complainant was well known in the technology industry well prior to 2012, and such conclusion is based on objective evidence of news articles and industry articles. See Viking Office Products, Inc. v. Multisys Computers Ltd., FA1104001385981 (Forum June 15, 2011) (finding that “Respondent’s registration and previous use of the confusingly similar disputed domain names <viking-offie.com>, <vikingstationary.com>, and <vikingsupplies.com> takes advantage of the potential for online customers to be confused as to Complainant’s association or affiliation with the domain names and competing services offered, which is another evidence of bad faith under Policy ¶4(b)(iv)”).
7. Complainant disagrees with Respondent’s statement that “Respondent Domain Website markets their own products and company and makes no reference nor similarities with Complainant.” In fact, the disputed domain has included hyperlinks to Complainant’s social media pages in the past, as evidenced by Complainant’s Annex 7 to the Complaint. Such intentional and implied affiliation with Complainant when selling competing products, demonstrates Respondent’s attempts to make financial gains by using a confusingly similar domain name.
8. Complaint denies the cryptic allegations Respondent has made regarding registering Complainant’s Facebook page through a dispute process. Complainant created its Facebook page under the normal Facebook registration process rather than through a Facebook dispute process. It is clear that Respondent has chosen to link to Complainant’s APPIAN LIFE Facebook page as a way of furthering its bad faith registration and use of the disputed domain and its attempt to confuse the public.
(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.
Complainant claims rights in the APPIAN mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,224,718, filed Jan. 19, 2012, registered on Oct. 16, 2012). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark, and such rights date back to the filing date of the mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)); see also ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). Complainant has rights in the APPIAN mark under Policy ¶4(a)(i).
Since the <appianlife.com> domain name was created ten days before Complainant’s USPTO filing date (January 19, 2012), Complainant claims common law rights in the APPIAN mark dating back to at least June, 2006 for the purposes of Policy ¶4(a)(i). Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant’s goods and services are used by millions of people, and it advertises on Facebook and Instagram pages to that effect. Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant reported total revenue in excess of three hundred million U.S. dollars from 2014 to 2016. Complainant has established common law rights by showing the APPIAN mark has taken on a secondary meaning in association with Complainant’s business.
Complainant claims the <appianlife.com> domain is identical or confusingly similar to the APPIAN mark as it contains the mark in its entirety and adds the descriptive term “life” as well as the gTLD “.com.” Panels have consistently found slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, do not adequately distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Complainant’s social media advertising included the phrase “Appian Life” and not merely Appian. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The lack of a space must be disregarded because domain name syntax does not allow spaces in domain names. The <appianlife.com> domain name does not contain sufficient changes that would adequately distinguish it from the APPIAN mark.
The fact third parties may have rights to the mark(or portions of the mark, such as the word “Life”) does not mean Complainant does not have rights in its mark, Mattel, Inc. v. RanComp Ltd., FA0510000579563 (Forum Nov. 29,2005).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in <appianlife.com> because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the APPIAN mark in any way. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Wellman Yu.” Respondent cannot assert the rights of a third party who does not own the domain name (namely the Appian Life Corporation registered on March 3, 2014 in California, which was formed AFTER the disputed domain name was registered on January 9, 2012). There is no evidence in the record to indicate Respondent was authorized to register a domain name using Complainant’s mark. This supports a finding Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent lacks rights or legitimate interests in the disputed domain name is evidenced by its failure to use the name for a bona fide offering of goods or services, or legitimate noncommercial or fair use. Respondent offers substantially goods and services that compete directly with Complainant. Using a confusingly similar domain name to offer goods and services that compete directly with a complainant should not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 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).”). Complainant and Respondent operate in the same field of development of software and programming (even though one targets business users more and the other targets consumer users more). Therefore, Respondent does not have rights or legitimate interests in the domain name under Policy ¶¶4(c)(i) or (iii).
Respondent cannot acquire rights to the mark simply because third parties may have rights to the mark (or a portion thereof), Mattel, Inc. v. RanComp Ltd., FA0510000579563 (Forum Nov. 29, 2005).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and uses the <appianlife.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶4(b)(iv) can be found where a respondent uses a confusingly similar domain name to resolve to a website featuring products and services that compete directly with the complainant. 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 created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s APPIAN mark, and uses the name to offer software development services. While Respondent registered the domain name ten days prior to Complainant’s trademark being filed on January 19, 2012, Complainant’s common law rights date back to June 2006. Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶4(b)(iv).
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 <appianlife.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, April 9, 2018
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