Cybertania, Inc. v. Right Mobile, Inc. Domain Manager and Right Mobile Inc. c/o Domain Manager
Claim Number: FA0706001015411
Complainant is Cybertania, Inc. (“Complainant”), represented by Leo
Radvinsky,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com>, and <ultrapasvord.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com and <myfree-paysite.com> and <ultrapsswrds.com> registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2007.
On June 25, 2007, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com> and <ultrapasvord.com> domain names are registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the names. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <myfree-paysite.com> and <ultrapsswrds.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwultrapassword.com, postmaster@ultrapssword.com, postmaster@ultrapaswort.com, postmaster@ultrapussword.com, postmaster@myfree-paysite.com, postmaster@ultrapsswrds.com and postmaster@ultrapasvord.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com>, <ultrapsswrds.com> and <ultrapasvord.com> domain names are confusingly similar to Complainant’s ULTRAPASSWORDS.COM mark. Respondent’s <myfree-paysite.com> domain name is confusingly similar to Complainant’s MYFREEPAYSITE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com>, <myfree-paysite.com>, <ultrapsswrds.com> and <ultrapasvord.com> domain names.
3. Respondent registered and used the <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com>, <myfree-paysite.com>, <ultrapsswrds.com> and <ultrapasvord.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cybertania, Inc., is engaged in the adult entertainment business. Since its inception in December 1998, Complainant has owned and operated a website at the <ultrapasswords.com> domain name and registered the ULTRAPASSWORDS.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,741,422 issued July 29, 2003). Among the best known adult websites available on the web, Complainant’s <ultrapasswords.com> domain name currently receives over 8 million unique visitors each month and garnered over 100,000 queries on the Yahoo! Search Engine in November 2006. Complainant has expended significant resources in promoting the goods and services available under its ULTRAPASSWORDS.COM mark.
In addition, Complainant registered the <myfreepaysite.com> domain name in March 2002 and currently maintains the domain name in connection with its adult entertainment enterprise. Complainant also registered the MYFREEPAYSITE.COM mark with the USPTO (Reg. No. 3,129,466 issued Aug. 15, 2006, filed Aug. 23, 2005) and has expended significant resources in advertising the goods and services available under this mark. Complainant’s <myfreepaysite.com> domain name is one of the most popular and frequently visited adult websites on the Internet, receiving over 20 million unique visitors per month.
Respondent registered the contested domain names over a
six-year period, beginning with <wwwultrapassword.com> on Augst 29, 2000 and,
most recently, <ultrapasvord.com> on January 7, 2006. Registration of the remaining disputed domain
names was interspersed within the period, namely, <ultrapssword.com>
on September 21, 2000; <ultrapussword.com> on Septmber 26, 2004; <ultrapaswort.com>
on August 17, 2005; <ultrapsswrds.com> on Nomber 20, 2005; and <myfree-paysite.com>
on November 22, 2005.
Respondent’s domain names presently resolve to pages of commercial
links, advertising various adult websites, products, and services, including
those of Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
While rights in a mark can be established absent official
registration with a governing authority, panels find that registration of a
mark is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). As a result Complainant has adequately
demonstrated rights in the ULTRAPASSWORDS.COM mark via registration with the
USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9,
2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
Notedly, Policy ¶ 4(a)(i) does not mandate registration of a mark with an appropriate governing authority in order for Complainant to establish rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Through the investment of enormous resources by Complainant in promoting the goods and services available under the ULTRAPASSWORDS.COM mark, as evidenced in the resultant high volume of traffic and numerous Internet queries seeking Complainant’s products, the Panel finds Complainant’s ULTRAPASSWORDS.COM mark has acquired secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). Such rights are held to exist before Complainant’s mark received official registration with the USPTO. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Complainant has established rights in its MYFREEPAYSITE.COM mark through registration with the USPTO. In line with the precedent finding registration of a mark with the appropriate governing authority sufficiently establishes rights in the mark under Policy ¶ 4(a)(i), the Panel holds that these rights extend back to the filing date of the application. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Accordingly, the Panel finds Complainant has adequately demonstrated rights in the MYFREEPAYSITE.COM service mark, extending back to the original August 23, 2005 filing date, satisfying Policy ¶ 4(a)(i).
Respondent’s <ultrapssword.com>, <ultrapaswort.com>,
<ultrapussword.com>, <ultrapsswrds.com> and <ultrapasvord.com>
domain names are all confusingly similar permutations of Complainant’s
ULTRAPASSWORDS.COM mark. The only
attempted differentiation by Respondent in the disputed domain names is the
sundry spelling of the “passwords” element of Complainant’s ULTRAPASSWORDS.COM mark. Intentional misspellings of another’s mark in
order to take advantage of common typographical errors does not result in a
domain name distinct from the original mark, but instead produces one readily
identifiable with the registered mark and, thus, confusingly similar under
Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA
103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark); see also Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000)
(finding that <davemathewsband.com> is a common misspelling of the DAVE
MATTHEWS BAND mark and therefore confusingly similar). Based on the foregoing, the Panel finds
Respondent’s <ultrapssword.com>, <ultrapaswort.com>,
<ultrapussword.com>, <ultrapsswrds.com>
and <ultrapasvord.com> domain names are confusingly similar to
Complainant’s ULTRAPASSWORDS.COM service mark under Policy ¶ 4(a)(i).
Additionally,
Respondent’s <wwwultrapassword.com> domain name is also
confusingly similar to Complainant’s ULTRAPASSWORDS.COM mark under Policy ¶
4(a)(i) not only on account of misspelling in the ommission of the “s,” but
also through the addition of “www” to Complainant’s mark, taking advantage of another
common user error- overlooking the period between the general “www” prefix and
the domain name. See Bank of
Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that the respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to the complainant’s registered trademark BANK OF AMERICA because it
“takes advantage of a typing error (eliminating the period between the www and
the domain name) that users commonly make when searching on the Internet”); see also Dana Corp. v. $$$ This
Domain Name Is For
Turning to the remaining domain name at issue, <myfree-paysite.com>, the Panel finds that this domain name, too, is confusingly similar to Complainant’s registered service mark. The <myfree-paysite.com> domain name makes use of Complainant’s MYFREEPAYSITE.COM mark in its entirety with the sole addition of a hypen between “free” and “paysite.” As stated by the panel in Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003), “[t]he addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.” See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). Accordingly, the Panel finds Respondent’s <myfree-paysite.com> domain name is confusingly similar to Complainant’s MYFREEPAYSITE.COM mark pursuant to Policy ¶ 4(a)(i).
Therefore, the Panel concludes Complainant has met its burden under Policy ¶ 4(a)(i).
As-stated by the panel in AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006), “[c]omplainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.” See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Finding Complainant has proffered the requisite initial showing concerning all of the domain names at issue, the Panel now considers whether Respondent has put forth any evidence demonstrating rights or legitimate interests in the disputed domain names.
In light of Respondent’s failure to respond to Complainant’s
allegations, the Panel may infer Respondent holds no rights or legitimate
interests in any of the disputed domain names under Policy ¶ 4(a)(ii). See
Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also Bank of Am. Corp. v. McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”). However, the
Panel will now examine the record to determine if it can be said that
Respondent has any rights or legitimate interests in the disputed domain name
through Policy ¶ 4(c).
The Panel finds nothing in the
record to suggest Respondent is commonly known by the <wwwultrapassword.com>, <ultrapssword.com>,
<ultrapaswort.com>, <ultrapussword.com>, <myfree-paysite.com>,
<ultrapsswrds.com> or <ultrapasvord.com> domain
names, nor is there anything in the record indicating Complainant has licensed
Respondent to register domain names incorporating its ULTRAPASSWORDS.COM or
MYFREEPAYSITE.COM marks. See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name).
The Panel, thus, finds Complainant is not commonly known by any of the
disputed domain names under Policy ¶ 4(c)(ii).
Further, Respondent’s use of the domain names in question to link to pages of commercial links for adult products and services, including those of Complainant’s competitors, does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Moreover, Respondent’s behavior in registering the domain names at issue is a precise example of typosquatting, utilizing typographical errors and common misspellings to create domain names confusingly similar to Complainant’s mark in order to prey on Internet users seeking Complainant’s products and divert them to other, often competing, websites. Typosquatting in and of itself fails to evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”). Thus, the Panel finds Respondent has failed to put forth any evidence demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com>, <myfree-paysite.com>, <ultrapsswrds.com> or <ultrapasvord.com> domain names.
Therefore, the Panel concludes Complainant has met its burden under Policy ¶ 4(a)(ii).
Respondent’s registration and use of the <wwwultrapassword.com>, <ultrapssword.com>,
<ultrapaswort.com>, <ultrapussword.com>, <myfree-paysite.com>,
<ultrapsswrds.com> or <ultrapasvord.com> domain names
evidences bad faith under Policy ¶¶ 4(b)(ii)-(iv).
First, the Panel finds Respondent’s registration of six
domain names bearing a confusing similarity to Complainant’s ULTRAPASSWORDS.COM
mark shows a pattern of infringing behavior sufficient to find bad faith
registration and use pursuant to Policy ¶ 4(b)(ii). See
EPA European Pressphoto Agency B.V. v.
Second, Respondent registered the domain names in question as a means of diverting Internet users seeking Complainant’s products under the ULTRAPASSWORDS.COM and MYFREEPAYSITE.COM marks away from the genuine source of these goods and services to other competing sources, suggesting bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Third, the Panel presumes Respondent is capitalizing on the
confusing similarity between Complainant’s marks and the disputed domain names
via the commercial links listed on Respondent’s websites. Internet users visiting Respondent’s site
will be mislead as to Complainant’s affiliation or sponsorship of the provided
links, as they are reflective of the adult entertainment industry in which
Complainant operates, and will presumably generate referral fees for Respondent
as they click through the links attempting to reach Complainant’s actual
site. Such use by Respondent
demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003)
(“Respondent's prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Furthermore, the examples of bad faith registration and use set forth in Policy ¶¶ 4(b)(i)-(iv) are not intended to be all inclusive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Respondent’s practice of typosquatting alone evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Therefore, the Panel concludes Complainant has met its burden under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwultrapassword.com>, <ultrapssword.com>, <ultrapaswort.com>, <ultrapussword.com>, <myfree-paysite.com>, <ultrapsswrds.com> and <ultrapasvord.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 6, 2007
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