WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LINBIT Information Technologies GmbH v. Technical Support

Case No. D2014-1528

1. The Parties

The Complainant is LINBIT Information Technologies GmbH of Vienna, Austria, represented by FMO Law Firm, Austria.

The Respondent is Technical Support, Product Response of Santa Monica, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <drbdsupport.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2014. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2014. The Response was filed with the Center on October 1, 2014.

The Center appointed Steven A. Maier as the sole panelist in this matter on October 3, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a limited liability company organized under the laws of Austria. It is a developer of software including an application named “DRBD”, which stands for “Distributed Replicated Block Device”. The software is used for data replication and, in particular, to ensure continuity of service in a disaster scenario. It is distributed by the Complainant on an open source basis.

The Complainant is the owner of a number of registrations for trademarks comprising or incorporating the term “DRBD”. In addition to several Austrian trademarks these registrations include, by way of example:

- International Trademark registration number 848071 for the word mark DRBD, registered on May 2, 2005 with a priority date of January 18, 2005, for hardware, software and related goods and services in Classes 09 and 42, designating Germany, France, Great Britain and the United States.

- International Trademark registration number 978269 for a word/figurative mark DR: BD registered on August 11, 2008 with a priority date of March 31, 2008, for the design and development of computer hardware and software in Class 42, designating a total of 29 territories, principally in Europe but also including Australia, Japan, the Republic of Korea and the United States. The mark consists of a logo comprising stylized lettering with the letters “DR” in pale orange, the colon in black and the letters “BD” italicized and in black (the “DR:BD Logo”):

The Respondent registered the Domain Name on June 3, 2014.

According to the exhibits submitted by the Complainant, as at July 22, 2014 the Domain Name resolved to a website at “www.drbdsupport.com”. The home page of the website was headed “OPENSOURCE911” in a stylized red, black and grey design, with the “911” having the appearance of an “emergency button”. The page continued: “NEED DRBD SUPPORT? CALL NOW [and then a number] WE ARE STANDING BY TO SUPPORT YOU – WE CAN SUPPORT ALL OF YOUR DRBD NEEDS – Linux Professionals”. The page appeared to include a “Live Support” link and contained further information about the Respondent’s services including links to “Installations & Custom Configurations”, “On-Site Support”, “Global Support” and “Phone Support”. Under the heading “WELCOME”, the site stated: “OPEN SOURCE 911 IS A U.S. (LOS ANGELES) BASED LEADING PROVIDER OF DRBD SUPPORT AND APPLICATION SERVICES TO FORTUNE 500 AND MID-SIZED COMPANIES AROUND THE WORLD. WE PROVIDE OUR CUSTOMERS WITH “REMOTE & ONSITE” SUPPORT. NOW REGARDLESS OF YOUR LOCATION WE CAN SUPPORT YOUR WORLD-WIDE DRBD INSTALLATIONS. WE HAVE ESTABLISHED A WORLD-WIDE NETWORK OF QUALIFIED DRBD PROFESSIONALS TO PROVIDE YOU WITH “REMOTE & ON-SITE” SERVICE”

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant refers to the trademark registrations described above. It states that it uses its DRBD marks for software and related services including support, quality assurance and teaching. It states that it offers support services including 24/7 telephone and email support, installation, testing and consulting. It exhibits pages from its website at “www.linbit.com/en-products-and-services/drbd-support” including references to various support contract packages. The Complainant states that support for DRBD comprises its main service.

The Complainant states that it is also the owner of numerous domain names incorporating the term “drbd” including <drbd.org> and <drbd.info>, registered in 2003, <drbd.net>, registered in 2004, and others more recently registered.

The Complainant submits that the Domain Name comprises a name that is identical to its DRBD trademarks together with the term “support” which is descriptive, meaning a “problem-centered consultancy service”. It contends that the term “support” does not add any distinctiveness to the Domain Name and can not prevent a likelihood of confusion between the Domain Name and the Complainant’s marks. The gTLD “.com” does not affect the comparison and Internet users are likely mistakenly to assume that the Domain Name is associated with the Complainant’s trademarks.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).

The Complainant states that it first released its DRBD product as a Linux-based application in 2000 and that it has protected the name and mark DRBD in various countries throughout the world since 2005. It states that the Respondent is not in any way affiliated with the Complainant and that it has never given the Respondent (or any other party) any rights to use its trademark DRBD or to register any domain name incorporating that mark.

The Complainant states that it offers the DRBD software as an open source product under the GNU Public License 2.0. This grants the right to copy and distribute the source code of the software but does not include any license to use the trademark DRBD. The terms of the GNU License and related FAQ make clear that no activities are licensed outside the copying, distribution and modification of the software and that the license does not extend to trademark use.

The Complainant submits that the Respondent’s registered name is “Technical Support” and that the name that appears on its website is “Opensource911”. Neither of these names relate to the Complainant’s name and mark DRBD and the Respondent does not have any registered trademark rights in the name DRBD. Therefore, the Respondent cannot claim any prior rights in that name.

The Complainant adds that the name “Technical Support” is descriptive and does not give any information about the legal entity comprising the Respondent. This suggests that the Respondent wishes to hide the real identity of the registrant of the Domain Name.

The Complainant submits that the Respondent’s activities do not fall within paragraph 4(c)(i) of the Policy, namely:

“… before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”

The Complainant refers to the decision in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, and in particular to the requirement that:

“The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”

The Complainant states that, unlike in the Oki Data case, the Respondent is not a distributor of or otherwise affiliated with the Complainant and has not been authorized to use the Complainant’s trademarks. However, in offering support services the Respondent uses the following phrases:

“a […] leading provider of DRBD […]”

“around the world”

“a worldwide network”

“Need DRBD support? […] Call now […] We are standing by to support you”

“We can support all of your DRBD needs”

The Complainant exhibits copies of the relevant parts of the Respondent’s website with the above statements highlighted. The Complainant submits that: “with this presentation the Respondent falsely suggests that he is a sales agent or has a distribution agreement or affiliation with the Complainant as the trademark holder of DRBD.”

The Complainant states that the Respondent does not include any disclaimer on its website which identifies the Complainant as the trademark owner of the mark DRBD, and states that the Respondent is not affiliated with the Complainant.

The Complainant further contends that, owing to the nature of the Domain Name, Internet users who are searching for information about the Complainant’s products and services will misleadingly be directed to the Respondent’s website. Even if Internet users may then become aware that the website is not affiliated with the Complainant, the Respondent will nevertheless have benefited from their being diverted to its website because of the “initial interest confusion” that has been caused by its use of the Domain Name.

The Complainant submits that the Respondent’s activities also fail to fall within paragraph 4(c)(iii) of the Policy, namely, making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Complainant exhibits further material from the Respondent’s website and submits that its activities cannot constitute noncommercial or fair use because the Respondent intends to receive commercial gain from its use of the Domain Name and is misleading consumers. Furthermore its use of the Domain Name tarnishes the Complainant’s trademark because a trademark is used to designate the origin of products and services and the Respondent fails to keep a clear distance between the Complainant’s trademark and the Domain Name.

The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant states that the Respondent must have been aware of the Complainant and its trademark rights in the mark DRBD at the time it registered the Domain Name. This would have been apparent from relevant trademark searches including a search in the United States, a simple Google search, a review of the Complainant’s website and the various domain names registered by the Complainant. Furthermore, the Respondent was clearly aware from the Complainant’s software package and license agreement that the Complainant was the developer of the DRBD software.

The Complainant submits that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy). Specifically, the Respondent knew that the mark DRBD referred to the Complainant’s software and registered the Domain Name in order to participate in the Complainant’s business by misleading customers into believing that the Domain Name was related to the Complainant.

Furthermore, the Respondent is intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the services on that website (paragraph 4(b)(iv) of the Policy). In particular, the Respondent’s website is designed to look like the official website of the Complainant for software support, or at least that of an official, affiliated partner company which is authorized to offer legitimate support services for the Complainant’s product. The Respondent’s use of the Complainant’s trademark misleadingly to attract Internet users to this website is improper and in bad faith.

The Complainant requests a transfer of the Domain Name.

B. Respondent

The Respondent states that it has been in the business of providing support for open source software packages for many years. It refers to the domain name <glstech.com> which was created in 1999 and the domain name <gilinux.com> which was created in 2004. It states that its services are in response to a need which it identified in the business community for support for open source software. It lists a total of 15 domain names, including the Domain Name, which it states it uses to drive web traffic and to offer support for a wide range of open source software packages. These include, for example:

<gilinux.com>

<asteriskagent.com>

<freeswitchsupport.com>

<openvpnsupport.com>

The Respondent states that it has been supporting the relevant open source packages faithfully and reliably for the past 15 years. So far as DRBD is concerned, the Respondent says that it has been supporting this package for longer than the Complainant itself. It states that in 2003 there was no mention of support on the Complainant’s website at “www.drbd.org” and exhibits a screen print from “web.archive.org” dated October 8, 2003 which is headed “What is DRBD?”. It also exhibits a page from “web.archive.org” dated February 8, 2004 in which it contends that the Complainant admits that no end-user documentation exists. The Respondent quotes in particular the statement:

“There are quite some people working on the scripts, a few reading/pathing the kernel module, but nobody so far wrote a single line of documentation.”

(The Panel notes that, while this statement does appear on an archived page of the Complainant’s website at “www.drbd.org”, it is at a location named “Community: Contributing” and it is not clear whether the statement was posted by the Complainant or another party.)

The Respondent states that it was precisely because of the lack of support for the DRBD package that it started to provide this service.

The Respondent submits that the Complainant’s domain is <drbd.org> and that the Complainant does not own <drbd.com>. It provides WHOIS details for this domain (which do not in fact include the registrant information).

The Respondent submits that its website looks nothing like the Complainant’s website, that it is not using the Complainant’s service marks and that it totally disagrees with the Complainant’s contentions that the site looks like the Complainant’s official website or the website of an affiliated partner.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights for the mark DRBD in numerous jurisdictions, for goods and services including computer hardware and software. The Domain Name consists of the terms “drbd” and “support” together with the gTLD “.com”, which is to be disregarded for the purposes of comparison. The Panel accepts the Complainant’s submission that the term “support” is descriptive and is not effective to distinguish the Domain Name from the Complainant’s trademark DRBD, which comprises the distinctive element of the Domain Name. Therefore, the Complainant has established that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s submissions that it is not connected with the Respondent, that it has never authorized the Respondent to use its trademark DRBD for the purposes of the Domain Name or otherwise, that the Respondent has not commonly been known by that name or mark, and that the Respondent has not been making noncommercial or fair use of the Domain Name as contemplated by paragraph 4(c)(iii) of the Policy. Indeed none of these matters is disputed by the Respondent. In this case, it is common ground that the Respondent is using the Domain Name for a commercial purpose, namely, to offer support services relating to the Complainant’s DRBD software. The question that arises in these circumstances is whether, despite the factors referred to above, the Respondent may nevertheless have rights or legitimate interests in respect of the Domain Name.

As stated above, under paragraph 4(c)(i) of the Policy, a Respondent may be able to establish rights or legitimate interests if it can show:

“… before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”

The question of whether a reseller or distributor of trademarked goods or services can have rights or legitimate interests in a domain name which contains such trademark has been considered in a number of cases under the UDRP and is specifically referenced in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Paragraph 2.3 of the WIPO Overview 2.0 states:

“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”

The “Oki Data principles” referred to above derive from Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903. In that case, which related to the domain name <okidataparts.com>, the panel considered whether an authorized sales or service agent of trademarked goods can legitimately use the trademark for the purposes of a domain name. The Panel found that, in assessing whether the respondent’s use was bona fide for the purposes of paragraph 4(c)(i) of the Policy, the following minimum terms had to be met:

(1) the respondent must actually be offering the goods or services at issue;

(2) the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

(3) the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and

(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

As indicated in the WIPO Overview 2.0, these principles have been extended in other UDRP cases to unauthorized resellers and analogous parties. These cases include Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, domain name <volvo-auto-body-parts-online.com> (complaint denied) and National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524, domain name <nascartours.com> (complaint denied), where the panel concluded that:

“… the Oki Data criteria are appropriate even in cases where the respondent is not an authorized dealer, so long as the Respondent operates a business genuinely revolving around the trademark owner’s goods or services.”

In the view of the Panel, the Respondent’s offering of support services for the DRBD software is capable of constituting a business genuinely revolving around the Complainant’s product. Therefore, the question is whether the Oki Data criteria have been met in this case.

The first issue is whether the Respondent is actually offering the goods or services at issue. The Respondent states that it offers support for the DRBD product and the evidence of its website would tend to support that claim. Furthermore, while the Complainant objects to the Respondent’s use of its trademark for the purposes of the Domain Name, it does not suggest that the Respondent’s website is a sham or that the Respondent does not genuinely offer support services for the DRBD product. The Panel notes that the Respondent’s website is not particularly sophisticated in nature and also that it follows a template which the Respondent also uses for other websites, which are linked to other domain names offering support for other software products. However, these factors do not lead the Panel to conclude that the website is not genuine, and in the circumstances the Panel finds that the Respondent is actually offering the services at issue.

With regard to the second Oki Data factor, there is no evidence before the Panel that the Respondent is using the Domain Name or associated website to offer any services other than support for the DRBD product. The pages of the website that have been exhibited do not refer to any other specific product and, once again, there is no allegation on the part of the Complainant that the website is used to offer any other goods or services. While it appears that the Respondent offers support for a number of other open source software applications, it appears to do so from different (albeit similarly configured) websites linked to other domain names and not from the website in issue in this case. The Panel notes in passing that, while the respondent in the Volvo Parts case had registered and was using a total of 10 other domain names referring to other well-known auto manufacturers, this did not affect the fact that it was using the website at issue only to sell the complainant’s goods. In the circumstances, the Panel finds that the Respondent has used the relevant website only to offer support for the Complainant’s DRBD product and that there is no evidence of any attempted “bait and switch”.

Turning to the third criterion, the Panel accepts the Complainant’s submission that the Respondent’s website does not include any express disclaimer stating either that the Complainant is the owner of the trademark DRBD or that the Respondent is in no way affiliated with the Complainant. However, the Panel does not accept the Complainant’s contention that the Respondent’s website represents itself either as the Complainant’s official website or that of an authorized partner of the Complainant. The Panel agrees that the Domain Name may cause a degree of “initial interest confusion” by its incorporation of the Complainant’s trademark DRBD, but that is not conclusive of the case and is, indeed, one of the circumstances which gives rise to consideration of whether the Oki Data criteria are applicable.

The Panel would comment that one of the factors in this case is that the Complainant offers its DRBD software on an open source basis. The Complainant refers in the Complaint to the GNU Public License 2.0, which includes the wording:

“Our General Public Licenses are designed to make sure that you have the freedom to distribute copies of free software (and charge for this service if you wish), that you receive source code or can get it if you want it, that you can change the software or use pieces of it in new free programs; and that you know you can do these things.”

While the Panel accepts the Complainant’s submission that there is nothing in the GNU license that grants any party a license to use the DRBD trademark, it is nevertheless appears to the Panel that an open source offering under the above terms must anticipate a degree of commercial third-party involvement with the product outside the direct control of the trademark owner. While this is in no way a determinative factor in this case, it does suggest to the Panel that members of the public would not necessarily assume that a domain name which includes the Complaint’s trademark is operated by or with the authorization of the Complainant.

While the Complainant has objected to a number of statements made on the Respondent’s website, the Panel notes that some of the Complainant’s quotations are somewhat selective (e.g. “a […] leading provider of DRBD […]” in fact says “a […] leading provider of DRBD support and application services […]”) and, in any event, the Panel does not believe that any of the statements that the Complainant has cited is any more suggestive of the Complainant or an authorized partner than of an independent contractor. Nor does the appearance of the Respondent’s website reflect the appearance of the Complainant’s own website or of its DR: BD Logo. The Respondent’s website uses a red, black and grey colour scheme as opposed to the orange colour used by the Complainant and does not feature the Complainant’s DR: BD Logo at all.

In the view of the Panel, the key question in this case is whether the lack of an express disclaimer on the Respondent’s website is fatal to the question of bona fide use of the Domain Name and therefore to the Respondent’s case. In this regard, the Panel notes that the language used in the WIPO Overview 2.0 differs from that in the Oki Data case. In Oki Data the requirement was stated as follows:

“The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”

This appears to the Panel to be, in essence, a duty to ensure that the website does not mislead the user as to the relationship between the registrant and the trademark owner and does not specifically require that an express disclaimer be included (although one was included in the Oki Data case). In the WIPO Overview 2.0, however, the requirement is stated as follows:

“…the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.”

While this is more suggestive of a positive duty to include a disclaimer, the Panel notes that the term “accurately and prominently” appears first to have been used in the Nascar case where, in the view of the Panel, it was used to describe the nature of the disclaimer in that case rather than expressing a requirement of general application. In earlier cases following Oki Data it does not appear to have been the case that an express disclaimer was necessarily required: in the Volvo/Auto Shivuk case no disclaimer was present, although the panel found that the site did disclose that the respondent was a “mere distributor of VOLVO auto parts”. The panel in that case stated:

“There are no facts which would suggest that the Respondent intentionally trades on the fame of Complainant and intentionally has adopted his website presentation so as to benefit from the goodwill of the VOLVO mark. The Respondent does not use the Logo of Complainant or otherwise improperly suggests that it is the trademark owner, or that the website is the official site. In fact, the Respondent merely uses a domain name which is descriptive of the business conducted under the domain name. The Panel therefore does not find that Internet users are likely to believe they are dealing with an authorized agent of Complainant or that Complainant sponsors or otherwise endorses the site.”

A similar view was taken in a later case, also involving Volvo, namely Volvo Trademark Holding AB v. Volvospares / Keith White WIPO Case No. D2008-1860, domain name <volvospares.com> (complaint denied). There was an issue in that case of whether a disclaimer had been added before or after the complainant had complained about the relevant website, but the panel in that case stated that:

“The presence or absence of a disclaimer is not conclusive or fatal.”

The panel in that case went on to say:

“Considering the Respondent’s website as a whole and each specific page, the Panel finds it does not misrepresent any association with the Complainant (or the VOLVO group). It represents nothing other than what appears to be true – that the Respondent offers for sale from the website parts for VOLVO vehicles. On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the Complainant or the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added.”

The Panel takes a similar view of the Respondent’s website in the present case. As stated above, the Panel does not accept the Complainant’s contentions that the appearance or the content of the Respondent’s website would be likely to mislead Internet users into believing it was a website operated by or affiliated with the Complainant. The statements relied on by the Complainant are no more suggestive of the Complainant or an authorized partner than of an independent contractor. Moreover, the Respondent’s site does not resemble the Complainant’s own website or corporate “get-up”: the colour schemes are different and there is no use by the Respondent of the Complainant’s distinctive DR: BD Logo. Furthermore, the Respondent’s wording: “OPEN SOURCE 911 IS A U.S. (LOS ANGELES) BASED LEADING PROVIDER OF DRBD SUPPORT AND APPLICATION SERVICES TO FORTUNE 500 AND MID-SIZED COMPANIES AROUND THE WORLD…” is clearly not consistent with the site being the Complainant’s, and does not suggest to the Panel that it is claiming to be that of an approved or affiliated partner.

The Panel also notes that WIPO Panels have not universally applied any requirement for an express disclaimer, even after the publication of the WIPO Overview 2.0: see, e.g. LEGO Juris A/S v. Stichting RIBW ZWWF, WIPO Case No. DNL2011-0042, domain name <gebruiktlego.nl> (complaint denied) and Lise Charmel Industrie v. Laurela Inc., Alexander Kargin-Utkin / Domains By Proxy LLC, WIPO Case No. D2012-1874, domain name <lisecharmel.org> (complaint denied).

In summary, on the facts of this particular case, the Panel is not of the view that the omission of an express disclaimer makes it materially more likely that any Internet user would be misled into believing that the Respondent’s website is operated by or with the authorization of the Complainant, or is otherwise fatal to the Respondent’s case. The Panel therefore considers that the third of the Oki Data criteria has been satisfied.

With regard to the fourth Oki Data factor, there are no grounds for believing that the Respondent is attempting to corner the market in relevant domain names and preventing the Complainant from reflecting its own mark in a domain name. This factor is therefore of no application in this case.

In the circumstances, the Panel finds that the Respondent’s use of the Domain Name satisfies the criteria set out in Oki Data and that the Respondent has rights or legitimate interests in respect of the Domain Name as contemplated by paragraph 4(c)(i) of the Policy. It follows that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

While the Panel’s finding in respect of rights or legitimate interests is sufficient to dispose of this case, the Panel will nevertheless comment briefly on the aspect of bad faith.

The Panel has found that the Respondent is using the Domain Name for the purposes of a bona fide business genuinely revolving around the Complainant’s DRBD product. While there can be no doubt that the Respondent was aware of the Complainant’s trademark when it registered the Domain Name, and that it did so specifically with the Complainant’s trademark in mind, these matters are not conclusive of bad faith in a case of a party which operates a business genuinely revolving around the trademark owner’s goods or services, which falls to be considered under the Oki Data principles.

Nor does the Panel accept the Complainant’s contention that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor (paragraph 3(b)(iii) of the Policy). Specifically, the Complainant contends that the Respondent registered the Domain Name in order to mislead internet users by its use of the Complainant’s trademark and to profit from the Complainant’s goodwill by offering support services for the Complainant’s product. However, the Panel does not consider that the Complainant has established an intention on the part of the Respondent to mislead, or that the disruption of the Complainant’s business was its primary (or any) motive in registering the Domain Name.

The Complainant also submits that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or a service on its website (paragraph 4(b)(iv) of the Policy). Once again, however, having found that the Respondent’s activities fall within the Oki Data criteria, the Panel does not consider that the Complainant has established the requisite intention on the part of the Respondent to create a likelihood of confusion.

There being no other circumstances that are suggestive to the Panel of bad faith on the Respondent’s part, the Complainant has failed to establish that the Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

The Panel should make clear that its findings as set out above are confined to its consideration of this case under the terms of the Policy, which was designed primarily to combat the behaviour known as “cybersquatting”. The Policy is not apt to determine cases of alleged trademark infringement per se and the Panel’s finding that the Respondent has rights or legitimate interests for the purposes of paragraph 4(c)(i) of the Policy neither amounts to nor implies any conclusions as to the outcome of any claim of that nature that may be brought in any other forum.

Steven A. Maier
Sole Panelist
Date: October 14, 2014