Oracle America, Inc. v. DomZilla Ltd.Claim Number: FA1009001348714
Complainant is Oracle America, Inc. ("Complainant"), represented by Andrew N. Downer of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is DomZilla Ltd. ("Respondent"), Thailand.«cFirstName» «cMiddle» «cLastName»
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org>, registered with PSI-USA, Inc. d/b/a Domain Robot (R68-LROR), PSI-USA.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2010; the National Arbitration Forum received payment on September 27, 2010«DateHardCopy».
On September 28, 2010, PSI-USA, Inc. d/b/a Domain Robot (R68-LROR), PSI-USA confirmed by e-mail to the National Arbitration Forum that the <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names are registered with PSI-USA, Inc. d/b/a Domain Robot (R68-LROR), PSI-USA and that Respondent is the current registrant of the names. PSI-USA, Inc. d/b/a Domain Robot (R68-LROR), PSI-USA has verified that Respondent is bound by the PSI-USA, Inc. d/b/a Domain Robot (R68-LROR), PSI-USA 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 October 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2010 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@de-openoffice.org, postmaster@deopenoffice.org, postmaster@www-open-office.org, postmaster@wwwopen-office.org, postmaster@de-openoffice.com, postmaster@deopenoffice.com, postmaster@es-openoffice.com, postmaster@esopenoffice.com, postmaster@fr-openoffice.com, postmaster@fropenoffice.com, postmaster@it-openoffice.com, postmaster@itopenoffice.com, postmaster@en-openoffice.org, postmaster@enopenoffice.org, postmaster@es-openoffice.org, postmaster@esopenoffice.org, postmaster@fr-openoffice.org, postmaster@it-openoffice.org, postmaster@itopenoffice.org, postmaster@nl-openoffice.org, and postmaster@nlopenoffice.org. Also on October 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.)as Panelist.
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" 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 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 names be
A. Complainant makes the following assertions:
1. Respondent’s <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names are confusingly similar to Complainant’s OPENOFFICE.ORG mark.
2. Respondent does not have any rights or legitimate interests in the <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org>domain names.
3. Respondent registered and used the <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oracle America, Inc., is a multi-national company with business operations in computer hardware, computer software, network computing equipment, and related services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OPENOFFICE.ORG mark (e.g., Reg. No. 3,063,339 issued February 28, 2006). Complainant uses the OPENOFFICE.ORG mark in connection with computer software and related goods, services and technologies.
Respondent registered the <de-openoffice.org> and <deopenoffice.org> domain names on April 14, 2009. Respondent registered the <www-open-office.org> and <wwwopen-office.org> domain names on January 17, 2010. Respondent registered the remaining domain names on July 16, 2010. The <de-openoffice.org> and <deopenoffice.org> domain names resolve to websites that purport to offer Complainant’s software for sale. The <www-open-office.org> and <wwwopen-office.org> domain names resolve to inactive websites. The remaining disputed domain names resolve to directory websites that list hyperlinks to third-party websites that offer software and computer-related products that compete with Complainant’s business.
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 claims rights in the OPENOFFICE.ORG mark through its registrations of the mark with the USPTO (e.g., Reg. No. 3,063,339 issued February 28, 2006). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the OPENOFFICE.ORG mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark 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). Additionally, the Panel finds it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends Respondent’s disputed domain names are confusingly similar to its OPENOFFICE.ORG mark. Respondent incorporates the majority of Complainant’s mark in each of the disputed domain names. Respondent also attaches country-code abbreviations to Complainant’s mark in the following disputed domain names: <de-openoffice.org>, <deopenoffice.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> (“DE” for Germany, “ES” for Spain, “FR” for France, “IT” for Italy, and “NL” for the Netherlands). In addition, Respondent attaches the letters “www” or “en” to Complainant’s mark in the <www-open-office.org>, <wwwopen-office.org>, <en-openoffice.org>, and <enopenoffice.org> domain names. The Panel finds that attaching country-code abbreviations and indiscriminate letters to a mark are additions that do not sufficiently distinguish domain names from the mark. The Panel also finds that hyphens are irrelevant to the Policy ¶ 4(a)(i) analysis. Finally, the Panel finds that switching the generic top-level domain (“gTLD”) “.org” in Complainant’s mark to the gTLD “.com” in some of the disputed domain names does not negate a finding of confusingly similar. See InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds Respondent’s <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names are confusingly similar to Complainant’s OPENOFFICE.ORG mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts it is not affiliated with Respondent. Complainant further asserts that Respondent is not authorized or licensed to use its OPENOFFICE.ORG mark. Moreover, the WHOIS information lists “DomZilla Ltd.” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the disputed domain names. Therefore, based on Complainant’s assertions and the WHOIS registrant information, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Complainant alleges the <de-openoffice.org> and <deopenoffice.org> domain names resolve to websites that purport to offer Complainant’s software. Complainant states the resolving websites require Internet users to sign up for a service plan of 96 Euros per year in order to download the counterfeit software. Screen shots of the resolving websites show sites that display images of Complainant’s OPENOFFICE.ORG software. The resolving websites also prominently display Complainant’s mark and name “OpenOffice” as the author of Respondent’s software. Based on the evidence in the record, the Panel finds that Respondent is using the <de-openoffice.org> and <deopenoffice.org> domain names in an attempt to pass itself off as Complainant. The Panel also finds Respondent uses the disputed domain names to phish for Internet users’ personal and financial information. Lastly, the Panel finds that Respondent uses the disputed domain names in order to profit from the sale of counterfeit goods. Accordingly, the Panel concludes that Respondent does not use the <de-openoffice.org> and <deopenoffice.org> domain names for 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (there is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Complainant claims the <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names resolve to directory websites that display links to third-party websites that offer computer software and computer-related products that compete with Complainant’s software and products. Screen shots of the resolving websites show lists of hyperlinks with titles like “Software Development,” “Dashboard Software,” and “Office 2010 Pro Download.” The Panel presumes that Respondent profits from its use of these disputed domain names through the receipt of “click-through” fees. Therefore, the Panel finds Respondent does not use the <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names for 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Finally, Complainant avers the <www-open-office.org> and <wwwopen-office.org> domain names resolve to inactive websites. The Panel finds Respondent’s failure to make active use of domain names that are confusingly similar to Complainant’s mark suggests that Respondent does not use the domain names for 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. 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); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent registered twenty-one domain names that are confusingly similar to Complainant’s OPENOFFICE.ORG mark. Accordingly, the Panel finds that Respondent has engaged in a pattern of bad faith registration and that these registrations prevent Complainant from reflecting its OPENOFFICE.ORG mark in a corresponding domain name. Therefore, the Panel finds the disputed domain names amount to bad faith pursuant to Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
Complainant argues that the <de-openoffice.org> and <deopenoffice.org> domain names resolve to websites that offer counterfeit versions of Complainant’s software. In addition, Complainant contends the <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names resolve to websites that provide hyperlinks to Complainant’s competitors. The Panel finds these disputed domain names disrupt Complainant’s business. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
As previously discussed, all of Respondent’s disputed domain names are confusingly similar to Complainant’s OPENOFFICE.ORG mark. Furthermore, Complainant avers that Respondent attempts to profit from the sale of counterfeit versions of Complainant’s software at the websites resolving from the <de-openoffice.org> and <deopenoffice.org> domain names. In addition, Respondent most likely profits from the receipt of click-through fees in relation to its use of the <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names. Therefore, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant's OPENOFFICE.ORG mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. As a result, the Panel finds Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Prior panels have found that failure to make active use of a domain name can qualify as bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). Respondent registered the <www-open-office.org> and <wwwopen-office.org> domain names on January 17, 2010, almost four years after Complainant registered the OPENOFFICE.ORG mark with the USPTO (e.g., Reg. No. 3,063,339 issued February 28, 2006). Therefore, the Panel finds Respondent’s passive holding of the disputed domain names constitutes registration and use in bad faith in this case under Policy ¶ 4(a)(iii).
The Panel finds 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 <de-openoffice.org>, <deopenoffice.org>, <www-open-office.org>, <wwwopen-office.org>, <de-openoffice.com>, <deopenoffice.com>, <es-openoffice.com>, <esopenoffice.com>, <fr-openoffice.com>, <fropenoffice.com>, <it-openoffice.com>, <itopenoffice.com>, <en-openoffice.org>, <enopenoffice.org>, <es-openoffice.org>, <esopenoffice.org>, <fr-openoffice.org>, <it-openoffice.org>, <itopenoffice.org>, <nl-openoffice.org>, and <nlopenoffice.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 15, 2010
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