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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Altiris Inc v Zoubov [2005] DRS 02420 (3 May 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02420.html Cite as: [2005] DRS 02420, [2005] DRS 2420

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Altiris Inc v Zoubov [2005] DRS 02420 (3 May 2005)

NOMINET UK DISPUTE RESOLUTION SERVICE DRS02420 DECISION OF INDEPENDENT EXPERT Altiris, Inc v Sergey Zoubov
1. Parties

Complainant :	Altiris, Inc
Country :	US
Respondent :	Sergey Zoubov
Country :	US

2. Domain Name

Altiris.co.uk

3. Procedural Background
4. 1 The Complaint was lodged with Nominet on 1 March 2005. The hard copies of the Complaint and associated documents were received in full on 17 March 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 22 March 2005. The Respondent was advised that he had until 18 April 2005 to respond to the Complaint. No Response was received from the Respondent, therefore Nominet did not initiate its mediation procedure.
5. 2 On 18 April 2005 Nominet informed the Complainant that it had until 3 May 2005 to pay the appropriate fee, following which Nominet would refer the case to an independent expert for a decision. The Complainant duly paid the fee on 20 April 2005. On 22 April 2005 Bob Elliott, the undersigned ("the Expert") confirmed to Nominet that there was no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 27 April 2005.
6. Outstanding Formal/Procedural Issues
7. 1 The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5.a of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). Paragraph 15.b of the Procedure provides inter alia, that "if in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".
8. 2 Paragraph 15.c of the Procedure provides that "if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure, ..… the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate".
9. 3 There is no evidence before the Expert to indicate the presence of exceptional circumstances. The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.
10. The Facts
11. 1 The Complainant was initially registered in the United States as a corporation in 1998. It is currently incorporated as a Delaware corporation. It is a US public company listed on NASDAQ.
12. 2 The Complainant's website describes its business as being IT Lifecycle Management which the Expert understands to involve the sale of various software products (and associated services) assisting businesses in the management of their IT hardware and software.
13. 3 The Complainant's wholly owned subsidiary in the United Kingdom, Altiris Limited, was incorporated on 10 January 2001.
14. 4 The Complainant trades extensively under the name ALTIRIS, and exhibits to its Complaint examples of a number of advertisements for some of its software products. The Complainant holds a registered trade mark for ALTIRIS in the United States, registered on 20 November 2001 and at the Community Trade Mark Office ("OHIM"), registered on 15 January 2002. There are a number of other pending applications and registrations in other jurisdictions. It also owns the domain name www.altiris.com, which was registered on 20 July 1998.
15. 5 The Respondent appears to have registered the Domain Name on 30 November 2004. The Complainant wrote to the Respondent on 20 December 2004 complaining that the Domain Name was linked to a pornographic website, asking the Respondent to "cease and desist" use of the ALTIRIS trade mark, and the Domain Name. The Complainant does not exhibit evidence of the link which apparently existed at that date. However, a reply from the Respondent by email dated 4 January 2005 which is exhibited to the Complaint does not contest the Complainant's assertions in that respect. Although the Respondent questioned whether the Complainant's trade mark registrations went as far as covering the activity of "promoting the goods and services of others by providing a website", the Respondent was apparently prepared to resolve the matter by "returning" the Domain Name to the Complainant, asking for relevant contact details.
16. 6 Despite the Respondent's email of 4 January 2005, nothing further seems to have been done in terms of transferring the Domain Name to the Complainant. The link to the pornographic website has been taken down, and there is no longer any active website associated with the Domain Name. The Domain Name remains registered in the name of the Respondent.
17. The Parties' Contentions

The Complainant

18. 1 The Complainant provides evidence to verify its trade mark rights in the name ALTIRIS which is identical to the Domain Name. Such evidence includes Certificates of Registration of the relevant trade marks, referred to above, as well as copies of advertisements.
19. 2 The Complainant argues that the Domain Name in the hands of the Respondent is abusive on a number of grounds. Those grounds are not specifically linked into the non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration set out at paragraph 3.a of the Dispute Resolution Service Policy ("the Policy").
20. 3 The Complainant's arguments are, in summary, as follows:-

(a) The Respondent's use of the Domain Name has already confused consumers into thinking that it was controlled by the Complainant;

(b) The Respondent's use of the Domain Name has meant that consumers would be likely to wrongly assume some form of sponsorship/affiliation between the Respondent and the Complainant;

(c) The Respondent's use of the Domain Name associates the Complainant's products with pornographic content "diluting as well as tarnishing the ALTIRIS mark, and the substantial goodwill associated with it";

(d) The Respondent has registered the Domain Name with details which do not correspond to the Complainant's corporate addresses or services;

(e) The Domain Name has been having a negative image impact on the Complainant, affecting its image with the investor community, which is particularly pronounced given that the Complainant's own corporate website is its primary communication tool;

(f) The registration of the Domain Name by the Respondent appears to have been made in "bad faith" given its timing, when the Complainant's business outside the United States was expanding, particularly in the United Kingdom;

(g) The continuing registration of the Domain Name stops the Complainant from registering its own trade mark as a domain name;

(h) The Respondent has no rights in the ALTIRIS name or mark and has no reason to incorporate the ALTIRIS trade mark in his domain name.

21. 4 The Complainant seeks the transfer to itself of the Domain Name.

The Respondent

22. 5 The Respondent has not filed any Response.
23. Discussion and Findings

General

24. 1 For the Complainant to succeed according to paragraph 2 of the Policy, the Complainant must prove to the Expert on the balance of probabilities both of the two elements set out in paragraph 2.a of the Policy, namely that:-

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

25. 2 The definition of Rights under the Policy "includes, but is not limited to, rights enforceable under English Law".
26. 3 In the light of the material provided by the Complainant, and in particular the registration of the CTM, the Expert finds that the Complainant has established that it has Rights in a name or mark which is identical to the Domain Name.

Abusive Registration

27. 4 Paragraph 1 of the Policy defines "Abusive Registration" as:-

"A Domain Name which either:

i. Was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii. Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".

28. 5 As referred to above, the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration in paragraph 3.a of the Policy. As noted, the Complainant has not specifically addressed any of these factors in its Complaint.
29. 6 Many of the Complainant's contentions do not, in fact, fall within the non-exhaustive list of factors in paragraph 3.a of the Policy, or to the extent that they may do so, are often unsupported by evidence (such as evidence of confusion).
30. 7 However, it seems to the Expert that there is little to be gained by a point-by-point analysis of the Complainant's arguments. One of the non-exhaustive list of factors which is included in paragraph 3.a of the Policy is as follows:- "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily ……. for the purpose of unfairly disrupting the business of the Complainant" (paragraph 3.a.i.C of the Policy).
31. 8 There is no obvious legitimate reason for the Respondent to have registered the Domain Name containing the ALTIRIS trade mark owned by the Complainant, the Domain Name appears to have been linked very shortly after its registration to a pornographic website, the Respondent's email of 4 January 2005 does not dispute those assertions, and there has been no Response to the Complaint. Any link to a pornographic website of a domain name which contains a trading name in active use by a third party such as ALTIRIS, is inherently likely to cause disruption to that party's business, and the Respondent has made no effort to advance an explanation for that link. In those circumstances, the Expert concludes that, on the balance of probabilities, the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
32. 9 Therefore, the Expert concludes that the Complainant has established that the Domain Name in the hands of the Respondent, is an Abusive Registration.
33. 10 In the circumstances, the Expert does not feel it is necessary to consider further the other individual arguments advanced by the Complainant, in the context of the Policy.
34. Decision
35. 1 The Expert finds that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name. Further, the Expert finds that the Domain Name is an Abusive Registration in the hands of the Respondent, and orders the Domain Name to be transferred to the Complainant.

Bob Elliott

Dated: 3 May 2005