Nutanix, Inc. v. Ye Li
Claim Number: FA1811001816929
Complainant is Nutanix, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is Ye Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutanix.biz>, registered with Key-Systems GmbH.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2018; the Forum received payment on November 16, 2018.
On November 19, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <nutanix.biz> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 November 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@nutanix.biz. Also on November 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Nutanix, Inc. is a cloud computing, database management, and data center infrastructure management software company.
Complainant has rights in the NUTANIX mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <nutanix.biz> domain name is identical to the NUTANIX mark, as it contains Complainant’s mark in its entirety and merely adds the “.biz” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <nutanix.biz> domain name. Respondent is not licensed or authorized to use Complainant’s NUTANIX mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <nutanix.biz> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell the at-issue domain name to Complainant for an amount in excess of out-of-pocket costs. Moreover, Respondent uses the domain name to redirect users to Respondent’s website that displays Complainant’s trademark and links services in direct competition with Complainant’s business.
Respondent registered and uses the at-issue domain name in bad faith. Respondent attempts to sell the disputed domain name for an amount in excess of out-of-pocket costs. Further, Respondent has engaged in a pattern of bad faith registration of domain names incorporating third-party marks. Moreover, Respondent is attempting to attract internet users to its website, where it advertises competing services, for commercial gain. Finally, Respondent had actual knowledge of Complainant’s NUTANIX mark prior to registering the <nutanix.biz> domain name given Respondent’s use of the domain name to offer advertisements to competing services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NUTANIX mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the NUTANIX trademark.
Respondent uses the at-issue domain name to offer the domain name for sale for an amount in excess of out-of-pocket costs and to direct visitors to a website that advertises for services in direct competition with Complainant.
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(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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been proffered by Complainant to show that Respondent is conversant and reasonably proficient in the English language and that Complainant would be unjustly burdened if the proceedings were required to go forth in Chinese. To wit, Complainant shows that Respondent has communicated with Complainant exclusively in English and that Respondent’s <nutanix.biz> website is also in English. Additionally, the operative domain name registration agreement commands that related proceedings such as, but not limited to, arbitration shall be in the English language. Therefore, after considering the circumstances of the present case and Complainant’s undenied aversions, the Panel concludes that the instant proceeding should be in English. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010) (“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”)
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has USPTO registrations for its NUTANIX mark as well as other national registrations for the mark worldwide. Complainant’s NUTANIX trademark registrations are each evidence of Complainant’s rights in the NUTANIX mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name contains Complainant’s NUTANIX trademark, and concludes with the top level domain name “.biz.” The slight difference between Respondent’s <nutanix.biz> domain name and Complainant’s trademark is insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). The inclusion of a top level domain is syntactically necessary in domain name nomenclature and has long been found irrelevant to analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <nutanix.biz> domain name is identical to Complainant’s NUTANIX trademark. 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Ye Li” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <nutanix.biz> domain name. The Panel therefore concludes that Respondent is not commonly known by the <nutanix.biz> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar <nutanix.biz> domain name is offered for sale by Respondent. Complainant provides an exhibit showing the <sedo.com> webpage for the at-issue domain name. The page indicates that the <nutanix.biz> domain name has an asking price of $9999 USD. Complainant, in its exhibits, also shows email correspondence between itself and Respondent where Respondent offers to sell the domain name to Complainant for an amount as low as $5999 and as high as $9,000 USD. Further, Respondent uses the <nutanix.biz> domain name to address a website displaying hyperlinks superficially relating to Complainant, such as, “Cloud Nutanix,” “Nutanix Cloud,” and “Nutanix Pricing, but actually referencing services competing with those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”); see also, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as elaborated above regarding rights and legitimate interests, Respondent attempts to sell the <nutanix.biz> domain name to Complainant and perhaps is behind an offer to sell the domain name through a third party website. The listed price of the domain name is, in either case, greater than Respondent’s estimated out-of-pocket costs pertaining to the domain name. Offering the at-issue domain name for sale for amounts in excess of out-of-pocket costs indicates Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Second, Respondent appears to have registered multiple domain names that are confusingly similar to well-known trademarks. Those domain names include <pizzahut.asia>, <salesforce.co.in>, and <cartier.tw> along with numerous others. Likewise and unsurprisingly, Respondent has been involved in multiple adverse UDRP proceedings. Respondent’s pattern of cybersquatting exhibited by the many trademark similar domain name registrations by Respondent, as well as the high number of adverse UDRP decisions, foreshadows and evidences Respondent’s bad faith in the instant case per Policy ¶ 4(a)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Next and as also discussed above regarding rights and legitimate interest, Respondent uses the at-issue domain name to address a website displaying competing advertising links. The <nutanix.biz> website displays Complainant’s trademark and thereunder lists links also containing Complainant’s trademark but directing visitors to competing websites. Respondent’s afore mentioned use of the domain name demonstrates bad faith under Policy ¶ 4(b)(iv). See State Farm Mutual Automobile Insurance Company v. xi wang, FA 1579058, (Forum Oct. 13, 2014) (“Respondent previously used the <statefarmsusa.com> domain name for a parked webpage that consisted of a variety of different links, some of which were in direct competition with Complainant. . . . the Panel finds that Respondent’s previous use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).”); see also, American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
Lastly, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the NUTANIX mark when it registered the <nutanix.biz> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark, its fanciful nature, the trademark’s repeated use on Respondent’s <nutanix.biz> website, and the fact that the links on that website callout Complainant’s trademark while actually referencing Complainant’s competition. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to 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 Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutanix.biz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 18, 2018
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