Decisión del Panel Administrativo nº D2013-1622 of WIPO Arbitration and Mediation Center, November 08, 2013 (case Attachmate Corporation v. Domain Administrator / Development Services, MindViews LLC)
| Resolution Date | November 08, 2013 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is Attachmate Corporation of Seattle, Washington, United States of America (“USA”), represented by Stokes Lawrence, P.S., USA.
The Respondent is Domain Administrator of Wellington, New Zealand / Development Services, MindViews LLC of Glenside, New Zealand.
The disputed domain name [filexpress.com] is registered with Netracorp, LLC dba Global Internet (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not wish to amend its Complaint in this matter.
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 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013. The Response was filed with the Center on October 16, 2013. On October 23, 2013, the Center received a Supplemental Filing from the Complainant. The Center acknowledged receipt of the Supplemental Filing on October 24, 2013. On October 28, 2013, the Center received a Supplemental Filing from the Respondent. The Center acknowledged receipt of the Supplemental Filing on October 29, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 25, 2013. 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.
The Complainant is a corporation headquartered in Seattle, Washington, USA. The Complainant is a global provider of software systems. The Complainant and its affiliates serve over 65,000 customers in more than 100 countries. There are more than 16 million users of the Complainant’s services. The Complainant is the owner of USA Trademark registration number 1511624 for the word mark FILEXPRESS in international class 9, registered on November 8, 1988. The Complainant states that it and its predecessor in interest have used the FILEXPRESS trademark in commerce since at least May 1986.
The Respondent is an entity based in Wellington, New Zealand. The Respondent provides information and consultation services relating to Internet infrastructure and architecture. The disputed domain name was registered on September 15, 2000. The website associated with the disputed domain name is entitled “File Xpress – Free to Send Files / How to Send Large Files”. The said website contains hyperlinks pointing to the website at the domain name [virtualdrive.com] which offers cloud storage services and file transfer protocol services.
The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that together with its predecessor in interest it has continuously used its FILEXPRESS trademark in commerce for 27 years. The Complainant submits that it has expended considerable effort and expense in promoting and protecting its FILEXPRESS mark and that the public has come to recognize the mark as identifying the Complainant’s software goods.
The Complainant contends that the disputed domain name is identical to its FILEXPRESS mark, noting that the disputed domain name incorporates the trademark in its entirety and that the “.com” suffix does not materially change the commercial impression of the disputed domain name and does nothing to dispel a connection with the said mark.
The Complainant asserts that the Respondent registered the disputed domain name some 14 years after the registration of its FILEXPRESS trademark, by which time the Complainant had gained recognition as a well-known provider of computer software and related services.
The Complainant contends that the Respondent does not own any registered or common law trademarks containing the term FILEXPRESS and has never been known by or operated a business under the FILEXPRESS name. The Complainant submits that the Respondent has no relationship to it and is not authorized to use its FILEXPRESS mark. Additionally, the Complainant notes that the Respondent is not affiliated with the Complainant and has not been granted any license to use the Complainant’s FILEXPRESS mark. The Complainant asserts that it is extremely unlikely that the Respondent was unaware of the Complainant’s business or its mark when the Respondent registered the disputed domain name.
The Complainant describes the website associated with the disputed domain name and avers that this does not constitute a bona fide offering of goods or services in terms of paragraph 4(c)(i) of the Policy. The Complainant states that the said website contains generic information on the subject of cloud computing and that within the website’s text are hyperlinked words and phrases, such as “share large files”, “send large files” and “backup software”. The Complainant notes that these hyperlinks resolve to the homepage of a company called Virtual Drive located at [virtualdrive.com], which displays links to “Mobile Client Apps”, “FREE Client Software” and “FTP Server”.
The Complainant avers that the disputed domain name operates as a “naked pass-through” offering no real and substantial offering of goods and services and instead hyperlinks to a website which offers goods and services that overlap with those offered by the Complainant. The Complainant submits that the Respondent registered the disputed domain name to create a misleading impression that it was associated with the Complainant with a view to exploiting the recognition and reputation of the...
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