Software Solutions LLC v Patty Sharkey

WIPO Case No. D2024-2156

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Amdocs Development Ltd., Amdocs Software Systems Ltd. and Amdocs
Software Solutions LLC v. Patty Sharkey

Case No. D2024-2156

1. The Parties

The Complainants are Amdocs Development Ltd., Cyprus, Amdocs Software Systems Ltd., Ireland, and
Amdocs Software Solutions LLC, Hungary (collectively, the “Complainant”), represented by Liad Whatstein &

Co., Israel.

The Respondent is Patty Sharkey, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <amdocsvolunteerteam.com> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2024. On
May 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 4, 2024, 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 (Wix.com Ltd.) and contact information in the Complaint. The
Center sent an email communication to the Complainant on June 4, 2024, 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 amended Complaint on June 9, 2024.

The Center verified that the Complaint together with the amended 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 June 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2024.

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The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 11, 2024. 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 Complaint has been filed by three companies (hereinafter the “Complainant”) belonging to the Amdocs Group, which develops and markets software solutions in various fields. The Complainant employees approximately 25,000 people worldwide and serves the leading players in the communication and media industries, spanning throughout 85 countries. The Complainant is listed on the NASDAQ Stock Exchange and had a market cap of USD 10,97 billion at the end of the year 2023.

The Complainant is the owner of a large portfolio of AMDOCS registered marks in various jurisdictions worldwide, including:

- AMDOCS (word mark), International registration No. 1302596, registered on April 11, 2016, for goods and

services in classes 9, 35 and 42, designating Switzerland, Israel, India and Mexico;

- AMDOCS, European Union registration No. 015184252, registered on July 13, 2016, for goods and

services in classes 9, 35 and 42;

- AMDOCS (word mark), United States registration No. 4925493, registered on March 29, 2016, for goods
and services in classes 9, 35 and 42.

The disputed domain name has been registered on March 13, 2024, by an individual, allegedly located in the United States. The disputed domain name resolves to a parking page of the Registrar, informing the user that the disputed domain name is inactive and containing links providing instructions to connect the disputed domain name to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that it is the sole right holder of the trademark AMDOCS and that the disputed domain name is identical to the Complainant’s mark.

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the disputed domain name and does not own any trademark consisting of, or containing, the word “amdocs”. The Respondent has no other connection with the AMDOCS mark and is not using the disputed domain name in connection with a legitimate, noncommercial or fair use, or in connection with a bona fide offering of goods or services. According to the Complainant, there is no legitimate business reason for the Respondent to register or hold the disputed domain name.

Lastly, the Complainant affirms that the Respondent has registered and has been using the disputed domain name in bad faith. The Complainant points out that its AMDOCS trademark is well known due to its longstanding and widespread use and the fact that it has been largely advertised. The Respondent was certainly aware of the existence of the earlier AMDOCS mark at the time of the registration of the disputed

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domain name and registered the disputed domain name in order to create confusion with the Complainant’s
mark. The actual knowledge of the Complainant’s mark and activities at the time of the registration of the
disputed domain name suggests bad faith. Moreover, in the Complainant’s view, the Respondent registered
the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain
name and to disrupt the business of a competitor. By using the disputed domain name, the Respondent has
intentionally attempted to attract for commercial gain Internet users to the Respondent’s website or other
online location, by creating a likelihood of confusion with the Complainant’s house mark and name as to the

source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Considerations – Consolidation of Multiple Complainants

Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii)

it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.1

The present proceedings involve three Complainants bringing a single Complaint against the same business activities. Accordingly, the Panel finds that the Complainants have a specific common grievance against the Respondent and the Respondent has engaged in common conduct that can affect the Complainants in a similar fashion.

B. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. rights over the AMDOCS trademark.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms, here, “volunteer team” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

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C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In particular, the Respondent does not appear to be commonly known by the disputed domain name and nothing in the case file suggests that it owns trademarks or other distinctive signs for the word “amdocs”. The Complainant does not have a business or other type of relationship with the Respondent and did not authorize the Respondent to reflect its AMDOCS mark in the disputed domain name.

The disputed domain name resolves to the Registrar’s parking page. Accordingly, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Given the nature of the disputed domain name, which incorporates the AMDOCS mark entirely, followed by the terms

“volunteer team”, which is connected to the Complainant and its business, the disputed domain name may
appear highly misleading at the consumers’ eyes, as it impersonates or suggests sponsorship or
endorsement by the trademark owner. Therefore, the Respondent is not making a fair use of the disputed

domain name. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

D. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has incorporated the Complainant’s AMDOCS trademark in the disputed domain name, along with the descriptive elements “volunteer team” which may relate to the Complainant and its business. The disputed domain name is therefore highly misleading as the

relevant Internet users could very well consider that it originates from the Complainant rather than from an unrelated third party. The Complainant is publicly traded on the NASDAQ stock exchange and operates in various countries worldwide, including in the United States where the Respondent is allegedly located. All these circumstances lead to the conclusion that the Respondent was likely aware of the Complainant’s mark
and activity when it registered the disputed domain name and that it registered the disputed domain name to
target the Complainant’s mark.

Panels have found that the non-use of a domain name (including a Registrar’s parking page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s

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trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Moreover, in these circumstances, absent explanation from the Respondent, the Panel is unable to conceive of any legitimate purpose for registration of the disputed domain name, other than to improperly take advantage of or otherwise abuse the Complainant’s mark.

In consideration of the foregoing, the Panel finds that the Complainant has established the third element of the Policy.

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 disputed domain name <amdocsvolunteerteam.com> be transferred to the Complainant.

/Angelica Lodigiani/
Angelica Lodigiani
Sole Panelist
Date: July 25, 2024.