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Serverworks Corporation v. Directname [2003] GENDND 368 (14 April 2003)


National Arbitration Forum

DECISION

Serverworks Corporation v. Directname

Claim Number:  FA0302000146929

PARTIES

Complainant is Serverworks Corporation, Santa Clara, CA, USA (“Complainant”) represented by Gary J. Nelson, of Christie Parker & Hale LLP. Respondent is Directname, Yongin-si Gyeonggi-do, II, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <serverwork.com>, registered with NetPia.com, Inc.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 26, 2003; the Forum received a hard copy of the Complaint on February 26, 2003. The Complaint was submitted in both Korean and English.

On February 27, 2003, NetPia.com, Inc. confirmed by e-mail to the Forum that the domain name <serverwork.com> is registered with NetPia.com, Inc. and that Respondent is the current registrant of the name. NetPia.com, Inc. has verified that Respondent is bound by the NetPia.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 7, 2003, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 27, 2003 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@serverwork.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch  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."  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.

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <serverwork.com> domain name is confusingly similar to Complainant’s SERVERWORKS mark.

2. Respondent does not have any rights or legitimate interests in the <serverwork.com> domain name.

3. Respondent registered and used the <serverwork.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Serverworks Corporation, has used the SERVERWORKS trademark since at least November 4, 1999. Under this mark, Complainant provides silicon-based building blocks that allow its customers to build servers, NAS and SAN storage systems, networking switches, routers and workstations. On November 4, 1999, Complainant filed a trademark application with the U.S. Patent and Trademark Office (“USPTO”) for the SERVERWORKS mark (U.S. App. No. 75/841,146). It is relevant to note that Broadcom Corporation is the parent company of Complainant.

Respondent, Directname, registered the <serverwork.com> domain name on August 23, 2002, and is not licensed or authorized to use Complainant’s SERVERWORKS mark for any purpose. On February 5, 2003, Respondent solicited Broadcom Corporation with an offer to sell its domain name registration for $540, noting that it thought that “this deal is good chance for you or your company.” On February 24, 2003, Respondent again e-mailed Complainant’s parent corporation, informing Broadcom that a third party had made an offer for the disputed domain name for $350 while inviting Broadcom to respond with a higher offer.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the SERVERWORKS mark through proof of application for a trademark with the USPTO, as well as through use of the mark in commerce. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also 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 Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <serverwork.com> domain name is confusingly similar to Complainant’s SERVERWORKS mark. The only difference between Complainant’s mark and Respondent’s domain name is the elimination of the letter “s” from the end of Complainant’s mark, which does not change the overall impression of the mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

Accordingly, the Panel finds that the <serverwork.com> domain name is confusingly similar to Complainant’s SERVERWORKS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant can meet its burden under Policy ¶ 4(a)(ii) by demonstrating to the Panel that Respondent would not have been able to rely upon the safe harbors listed for domain name Registrants in Policy ¶¶ 4(c)(i)-(iii). As Respondent submitted no response to the Complaint, such a showing results in a finding for Complainant on this element. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Half a year after registering the <serverwork.com> domain name, Respondent solicited Complainant’s parent corporation with an offer to sell the domain name registration for $540. During the months between Respondent’s registration of the domain name and its unsolicited sale offer, Respondent did nothing to develop a website at the disputed domain name. The Panel infers that Respondent registered the disputed domain name because it knew of its value to Complainant, and intended to profit from its sale of the registration to Complainant. This type of activity is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

Nothing before the Panel indicates that Respondent was ever “commonly known by” the name <serverwork.com>. What is clear is that Respondent has not used the domain name, and has done nothing with its registration other than to offer it for sale. As such, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent did not respond to the Complaint. The Panel chooses to view this lack of response as evidence that it lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <serverwork.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s two separate and unsolicited offers to sell its infringing domain name registration to Complainant are evidence that Respondent’s primary purpose in registering the domain name was sale of that registration to Complainant. Respondent’s failure to develop a website further bolsters this inference. As Respondent’s asking price for the domain name ranged from $350 to $540, despite the fact that it had not made any use of the domain name, the Panel concludes that these prices reflect an amount “in excess of” Respondent’s “out-of-pocket costs directly related to the domain name.” This evidences bad faith use and registration of the domain name pursuant to Policy ¶ 4(b)(i). See Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them for sale to Complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

The Panel thus finds that Respondent registered and used the <serverwork.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <serverwork.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  April 14, 2003


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