Splunk Inc. v. Jerome Mol / LEANDER
Claim Number: FA1601001658857
Complainant is Splunk Inc. (“Complainant”), represented by Pamela S. Chestek, North Carolina, United States. Respondent is Jerome Mol / LEANDER (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <splunkmasters.us>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2016; the Forum received payment on January 30, 2016.
On February 2, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <splunkmasters.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@splunkmasters.us. Also on February 3, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 uses its SPLUNK mark in connection with its complex software that analyzes “machine data,” which is data coming from a variety of sources such as hardware devices, operating systems, applications, and websites. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,269,249, registered July 24, 2007), which demonstrates Complainant’s rights in its mark. The <splunkmasters.us> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and adds the generic term “masters”.
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to sell services that compete directly with Complainant’s business.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s use of the domain to sell services that compete directly with Complainant’s business disrupts and competes with Complainant. Second, Respondent has violated Policy ¶ 4(b)(iv) by using a confusingly similar domain to promote services that are in direct competition with Complainant. Third, Respondent has attempted pass itself off as Complainant through the use of the domain name. Finally, Respondent registered the domain with actual knowledge of Complainant’s mark.
B. Respondent
The Panel notes that the disputed domain name was registered on January 29, 2015.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 (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.”).
Complainant uses its SPLUNK mark in connection with its complex software. Complainant has registered the mark with the USPTO (e.g., Reg. No. 3,269,249, registered July 24, 2007). Complainant asserts that its USPTO registration demonstrates Complainant’s rights in its mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), in spite of any geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <splunkmasters.us> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and adds the generic term “masters”. Previous panels have held that the addition of a generic term to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel notes that the record does not indicate that Respondent has an identical mark to that of Complainant.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Jerome Mol / LEANDER” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to sell services that compete directly with Complainant’s business. Prior panels have decided that a respondent’s use of a domain to sell products and/or services that are competitive with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
Complainant argues that Respondent’s use of the domain to sell services that compete directly with Complainant’s business disrupts and competes with Complainant. Previous panels have held that a respondent’s registration of a confusingly similar domain in order to operate a competing website supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) on the part of the respondent. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). This Panel similarly finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends that Respondent has violated Policy ¶ 4(b)(iv) by using a confusingly similar domain to promote services that are in direct competition with Complainant. Prior panels have concluded that a respondent has demonstrated bad faith under Policy ¶ 4(b)(iv) where it uses a domain to sell products and/or services that are in direct competition with a complainant’s business. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Similarly here, the Panel finds that Respondent registered and is using the domain in bad faith.
Complainant asserts that Respondent has attempted to pass itself off as Complainant. As supporting evidence, Respondent references another domain purportedly registered by Respondent, <splunkmasters.net>, wherein Respondent allegedly prominently displays Complainant’s trademark. This Panel has also ruled against Respondent with respect to its registration and use of <splunkmasters.net>. See Splunk Inc. v. Mol, FA1658856 (Nat. Arb. Forum March 10, 2016). This course of conduct constitutes additional evidence of bad faith.
Finally, Complainant argues that Respondent registered the domain with actual knowledge of Complainant’s mark. Complainant asserts that the date of Respondent’s domain registration, the addition of a generic word that relates to Complainant’s business, and Respondent’s offering of services related to Complainant’s products make it inconceivable that Respondent did not have actual knowledge of Complainant’s mark at the time the domain name was registered. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Similarly here, the Panel infers that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <splunkmasters.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 10, 2016
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