Science Applications International Corporation v. International Names Ltd.
Claim Number: FA0612000868891
Complainant is Science Applications International Corporation (“Complainant”), represented by Douglas
A. Rettew, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sa-ic.com>, registered with Belgiumdomains.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sa-ic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sa-ic.com> domain name is confusingly similar to Complainant’s SAIC mark.
2. Respondent does not have any rights or legitimate interests in the <sa-ic.com> domain name.
3. Respondent registered and used the <sa-ic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Science Applications International Corporation, is a Fortune 500 company primarily engaged in scientific research in the engineering, systems integration and technical services industries. Complainant’s customers include the United States government and commercial businesses in the national security, energy, environment, space, telecommunications, healthcare and logistics industries. Since as early as 1984, Complainant has continuously and extensively used the SAIC mark in connection with its products and services.
Complainant maintains its primary website at the <saic.com> domain name. Complainant has registered the SAIC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,440,254 issued May 19, 1987; Reg. No. 2,876,009 issued August 24, 2004; Reg. No. 2,902,628 issued November 16, 2004; Reg. No. 1,414,643 issued October 28, 1986; Reg. No. 1,923,396 issued October 3, 1995).
Respondent’s <sa-ic.com> domain name, which it registered on October 16, 2006, resolves to a commercial web directory displaying links to websites that compete with Complainant and websites providing unrelated products and services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SAIC mark for purposes of Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
As the <sa-ic.com> domain name incorporates
Complainant’s SAIC mark in its entirety and merely inserts a hyphen into the
mark, Respondent has failed to sufficiently distinguish the disputed domain
name from the mark. In Teradyne, Inc.
v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), the Panel stated that the
“addition of a hyphen to the registered mark is an insubstantial change. Both
the mark and the domain name would be pronounced in the identical fashion, by
eliminating the hyphen.” Similarly, in Teleplace,
Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000), the
respondent had registered the <tele-place.com> domain name, among others,
and the panel found it to be confusingly similar to the complainant’s TELEPLACE
mark. Consequently, the Panel finds that
Respondent’s addition of a hyphen to the middle of Complainant’s SAIC mark
renders the disputed domain name confusingly similar to the mark pursuant to
Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <sa-ic.com> domain name. Complainant must first make a prima facie case
in support of its allegations, and then the burden shifts to Respondent to show
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of
the Policy requires that the Complainant prove the presence of this element
(along with the other two), once a Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <sa-ic.com> domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that
the respondent’s failure to produce requested documentation supports a finding
for the complainant); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record suggesting that Respondent is commonly known by the <sa-ic.com> domain name. The WHOIS information simply lists Respondent as “International Names Ltd.” As a result, Respondent has not established rights or legitimate interests in the <sa-ic.com> domain name under Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore, Respondent’s <sa-ic.com>
domain name, which is confusingly similar to Complainant’s SAIC mark, resolves
to a website featuring links to Complainant’s competitors and to unrelated
content. In TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel
determined that the respondent’s registration and use of confusingly similar
domain names to divert Internet users to its own website did not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the
complainant’s direct competitors only reinforced that conclusion. Because Respondent is also diverting Internet
users to its own website containing links to Complainant’s competitors, its use
of the disputed domain name also does not fall within the parameters of a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of
Choice Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to the complainant’s WAL-MART mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the complainant
did not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the <sa-ic.com> domain name
resolves to a website featuring links to Complainant’s competitors and to
unrelated websites. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel
found that the respondent had registered and used the <euro-disney.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to
a website promoting a competing theme park.
Here, then, Respondent’s use of the disputed domain name to operate a
website with links to Complainant’s competitors provides evidence that it
registered the domain name primarily to disrupt Complainant’s business in bad
faith under Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Furthermore, Respondent has registered and is using the <sa-ic.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a web directory featuring links to Complainant’s direct competitors. In Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found that the respondent’s diversion of Internet users who were seeking the complainant’s website to its own website for commercial gain created “a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, endorsement, or affiliation of its website” and, therefore, provided evidence of bad faith registration and use in violation of Policy ¶ 4(b)(iv). In this case, Respondent is also redirecting Internet users seeking Complainant’s products and services to its own website for commercial gain, because Respondent likely receives click-through fees for each consumer it diverts to other websites. Hence, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s SAIC mark in order to profit from the goodwill associated with the mark, which violates Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum Jun. 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sa-ic.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated:
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