WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Digium Inc. v. Asterisk Agent / Technical Support, Product Response

Case No. D2018-2435

1. The Parties

The Complainant is Digium Inc. of Huntsville, Alabama, United States of America (“United States”), represented by Michelle Fleming, United States.

The Respondent is Asterisk Agent of Santa Monica, California, United States / Technical Support, Product Response of Santa Monica, California, United States, internally represented.

2. The Domain Name and Registrar

The disputed domain name <asteriskagent.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 October 25, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 29, 2018.

The Center verified that the Complaint, together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Response was filed with the Center on November 20, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 4, 2018. 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 communications technology company formed as a Delaware corporation and headquartered in Huntsville, Alabama, United States. The Complainant created the popular “Asterisk” telephony software allowing ordinary computers to function as voice servers, much like a dedicated private branch exchange (“PBX”), making use of voice over Internet protocol (“VoIP”). Asterisk is distributed on a free and open-source basis, but the Complainant and others offer commercial hardware and software products that are based on Asterisk and add functionality for various applications. The Complainant also offers consulting and technical services to businesses implementing Asterisk VoIP solutions.

The Complainant operates a commercial website at “www.digium.com” and also a website at “www.asterisk.org” that supports the open-source Asterisk community. Both websites refer to the Complainant’s Asterisk Licensing Program, which offers commercial and noncommercial licenses. The linked Trademark Policy expressly does not permit using the Complainant’s trademarks in a URL, and the FAQs highlight this prohibition: “We do not license trademarks in URLs, domains, company names, product names, or service names.”

The Complainant holds several United States and International ASTERISK and ASTERISKNOW trademark registrations, including United States Trademark Registration Number 3013408 (registered November 8, 2005) for ASTERISK as a standard character mark. The Complainant also claims common law protection for ASTERISK since 2003.

According to the Registrar, the Domain Name was created on June 22, 2006. The Response confirms that “we” registered the Domain Name on that date. The Respondent’s website associated with the Domain Name (the “Respondent’s website”) is headed “asteriskagent” with an accompanying logo featuring stylized orange human figures surrounding an orange square with a white asterisk character in the center. The website prominently advertises contact details for “24-hour Asterisk support services”, “remote and on-site”. The website identifies Asterisk Agent as “a division of Product Response”, “not affiliated with Digium Inc.” Product Response has a website at “www.productresponse.com” showing that, like Asterisk Agent, it is based in Santa Monica, California, United States and offers VoIP support solutions and hardware. The Respondent’s website advertises a hardware device called the “Asterisk Mini” that evidently permits users to connect multiple telephones to a computer running either Asterisk or FreePBX software. The website also lists software that the Respondent “supports”, displaying first the Complainant’s ASTERISK mark with the “TM” symbol and an orange asterisk character (not the Complainant’s trademarked orange “Asterisk speech bubble” design mark), as well as logos, with trademark symbols in some cases, for PBX in a Flash (Linux-based virtual PBX software), Elastix (open-source, Internet-based, unified communications software), Amazon Web Services (cloud computing solutions), Rhino (3D modeling software), TrixBox (open-source business telephony software), FreePBX (open-source graphical user interface for Asterisk), iSymphony (call management software for Asterisk), A2Billing (VoIP billing software), VICIdial (open-source contact center solution), QueueMetrics (call center monitor for Asterisk, FreePBX, Elastix, and other VoIP solutions), Redfone (VoIP utilities), Polycom (VoIP phones and videoconferencing), and CounterPath (unified communications over Internet). For the most part, these are Asterisk-based or compatible products, but some (like Rhino) are not, and some of these products clearly compete with the Complainant’s commercial offerings. The Respondent’s website advertises technical support services provided by “qualified Asterisk professionals”, as well as training and temporary staffing to help clients operate their “internal telephone and call center infrastructures.”

The Response was filed in the name of Asterisk Agent, although the current registration information for the Domain Name identifies the registrant’s organization as Product Response. The online database operated by the California Secretary of State does not list a licensed business entity named Product Response. That database shows Asterisk Agent LLC was a California limited liability company, registered on September 8, 2008, now suspended. Its registered agent was the same person who submitted the Response in the current proceeding, Mr. Sauceda. The Panel concludes that Asterisk Agent and Product Response are related entities or alter egos of Mr. Sauceda and therefore refers to them collectively hereafter as the “Respondent.”

The Respondent indicates that its business model is to offer support services for open-source software, and it has done so not only for Asterisk software but also for other open-source products. In 1999, the Respondent launched a website at “www.glstech.com” (for “Global Linux Support” technology) advertising support services for several open-source software products. (That website is no longer active, but archived screenshots are available through the Internet Archive’s Wayback Machine.) The Respondent also created a similar website associated with the domain name <opensource911.com> (911 is the information services number on all United States public telephone networks), which remains active. This website advertises remote and on-site support for a variety of open-source software products, including Asterisk.

In some cases, as for Asterisk, the Respondent has registered domain names and developed websites to advertise its support and consulting services relating to particular software, proprietary as well as open-source. These domain names include <cudatelsupport.com> (relating to Barracuda’s former line of CudaTel VoIP phones), <drbdsupport.com> (DRBD is an open-source Linux storage system), <gilinux.com> (Linux is a family of open-source operating systems, and “GI” is used by software developers to refer to “genetic improvement”, see Wikipedia, “Genetic improvement (computer science)), <freeswitchsupport.com> (FreeSWITCH is open-source VoIP software), and <openvpnsupport.com> (OpenVPN is open-source software to create secure point-to-point communications similar to a virtual private network). At least one of these has been the subject of a UDRP dispute, as discussed further below.

The Respondent states that while it has provided support for open-source Asterisk software since 2000, the number of requests increased in 2006 because the Complainant’s own support offerings allegedly focused on the paid, “business edition” of Asterisk. According to the Respondent, this was the motivation for registering the Domain Name and developing a website to highlight the Respondent’s capabilities in supporting users implementing the free, open-source version of Asterisk.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its ASTERISK marks and that the Respondent has registered and used the Domain Name without permission and in bad faith, in an effort to confuse and misdirect Internet users for commercial gain. The Complainant points to the Respondent’s use, on its website, of a similar mark and logo, color scheme, and references to the Complainant’s training and examinations as evidence of deliberate efforts to create a false association with the Complainant, while competing with the Complainant to offer Asterisk support and solutions.

B. Respondent

The Respondent contends that it is “one of the community support options available to support the ‘Free’ Open Source version of Asterisk”, as mentioned on the Complainant’s website. The Respondent argues that it has been offering professional services related to open-source Asterisk software for nearly twenty years and that a review of the parties’ websites shows no likelihood of confusion or effort to mislead users.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds registered ASTERISK trademarks. The Domain Name incorporates this mark in its entirety. The addition of the generic term “agent” is not distinctive and does not distract from the visibility of the Complainant’s mark. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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 or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has established its trademark rights, confusing similarity, and the lack of permissive use. The Respondent, which is not represented by counsel, simply argues that it has been using the Domain Name to offer professional support services for open-source Asterisk software since 2006 and cites its success in similar circumstances with respect to the domain name <drbdsupport.com> in LINBIT Information Technologies GmbH v. Technical Support, WIPO Case No. D2014-1528 (“DRBD”).

In DRBD, the same Respondent prevailed against the Austrian company that distributed DRBD software on an open-source basis. The panel in that case found that the Respondent’s “offering of support services for the DRBD software is capable of constituting a business genuinely revolving around the Complainant’s product” and then applied the same tests that govern the legitimate, nominative fair use of a trademark in a domain name by a reseller or distributor:

(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.

Id., citing Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903; Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 (Oki Data); National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524; see WIPO Overview 3.0, section 2.8.

The Panel notes that this line of reasoning concerns the Respondent’s nominative fair use and is thus not constrained by the Complainant’s licensing restrictions against using its marks in domain names.

Applying the Oki Data criteria in DRBD, the panel found in favor of the Respondent, because the Respondent genuinely offered DRBD support services and did not advertise services relating to other software on the associated website. The panel also did not find the Respondent’s website misleading as to source or affiliation, despite the lack of a disclaimer of affiliation with the trademark owner.

Here, however, there is an important difference in the way the Respondent uses the Domain Name. While there is a disclaimer on the Respondent’s website, and the Panel does not find persuasive evidence of misleading similarities between the parties’ websites or figurative logos, the Respondent’s website in this case is used to advertise the Respondent’s services relating to many products other than those trademarked by the Complainant. Indeed, some of those products appear to be directly in competition with the Complainant’s. Even the Respondent’s hardware is advertised on the website as working with competing software, FreePBX, as well as with Asterisk software.

The fact that the Respondent formerly had a business entity with a corresponding name is not decisive in this case. (It appears from the official California database that this entity was created more than two years after the Domain Name was registered, and that it is now suspended.) However the Respondent named its business, it could not fairly advertise it with a Domain Name using the Complainant’s marks unless it took care to avoid confusion and limit the associated website to products and services associated with the trademarked products (see WIPO Overview 3.0, sections 2.4, 2.5, 2.8). The Respondent did not exercise such care in this case.

Accordingly, the Panel finds in favor of the Complainant on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant implicitly relies on the inference that the Respondent knowingly uses the reputation associated with the Complainant’s mark to attract business to the Respondent’s website. There is no dispute that the Respondent was aware of the Complainant and the Asterisk products; the Respondent claims to be the “oldest” enterprise offering support services for open-source Asterisk software. The Complainant overstates the similarities between the parties’ websites, which are not visually similar or strikingly parallel in content. Nor is it clear that the Respondent falsely claims to offer the Complainant’s own training, examinations, or certification. However, it is evident that the parties compete to some extent in offering support and consulting services relating to Asterisk implementation and VoIP call center operations. The Domain Name itself does not lessen the initial likelihood of confusion as to source or affiliation, because while an “agent” is often a third party, an agent usually has some association with the principal. Thus, the Respondent likely attracts some visitors to its website who are not initially aware that it is unaffiliated with the Complainant.

The core problem, from the perspective of bad faith, is similar to the reason that the Respondent fails to establish rights or legitimate interests under the second element of the Complaint. It appears from archived screenshots of the Respondent’s website that the Respondent has been using the Complainant’s trademark for many years to attract prospective customers to the Respondent’s website and then present them with advertising for the Respondent’s services, not only relating to Asterisk products but also to a variety of others. It is bad faith, within the meaning of the Policy, to exploit another’s trademark for commercial gain, and the Respondent’s bad faith is not obviated by a fair-use claim to legitimacy, because the Respondent has not limited its use of the Domain Name to its business related to Asterisk software.

The Respondent says it relies on the Complainant’s website encouragement for users to seek support from the open-source “community”, but this is disingenuous. While the wider community participates in open-source software development and discussions, and many enterprises offer commercial services around Asterisk solutions, the Complainant’s commercial and open-source websites make it very clear that the Complainant retains trademark rights and does not license ASTERISK for use in domain names. Trademark notices and statements appear as well on archived screenshots of the Complainant’s website at the time the Respondent registered the Domain Name in 2006, yet the Respondent soon began using the Domain Name, incorporating the Complainant’s trademark, to advertise unrelated and even competing commercial offerings. This must be considered bad faith for Policy purposes.

The Panel concludes that the Complainant has established the third element of the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <asteriskagent.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: December 7, 2018