BA Software Limited v.
Cyberwire LLC a/k/a Conqueror LLC a/k/a Doug Petrie
Claim Number: FA0808001220463
PARTIES
Complainant is BA Software Limited (“Complainant”), represented by Victor K. Sapphire, of Connolly Bove Lodge & Hutz LLP, California, USA. Respondent is Cyberwire LLC a/k/a Conqueror LLC a/k/a Doug Petrie (“Respondent”), represented by Matthew M. Thomson, of Kronenberger Burgoyne, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <blinge.com>, registered with Tucows Inc.; <blingme.com>, registered with Domaindiscover; and <blingme.org>, and <blingme.info>, registered
with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 13, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 15, 2008.
On August 14, 2008, Tucows Inc., confirmed by e-mail to the
National Arbitration Forum that the <blinge.com> domain name is
registered with Tucows Inc., and that the
Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
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 August 14, 2008, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <blingme.com> domain name is
registered with Domaindiscover, and that
the Respondent is the current registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the
Policy.
On August 14, 2008, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <blingme.org> and <blingme.info>
domain names are registered with GoDaddy.com,
Inc., and that the Respondent is the current registrant of the
names. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On August 20, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 9, 2008 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@blinge.com, postmaster@blingme.com, postmaster@blingme.org, and postmaster@blingme.info
by e-mail.
A timely Response was received and determined to be complete on September 8, 2008.
An Additional Submission was received from Complainant on September 15,
2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on September 22,
2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
On September 18, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <blinge.com>, <blingme.com>, <blingme.org>, and <blingme.info> domain names are confusingly similar to Complainant’s BLINGEE mark.
2. Respondent does not have any rights or legitimate interests in the <blinge.com>, <blingme.com>, <blingme.org>, and <blingme.info> domain names.
3. Respondent registered and used the <blinge.com>, <blingme.com>, <blingme.org>, and <blingme.info> domain names in bad faith.
B. Respondent makes the following assertions:
1. The
parties have a legitimate trademark dispute, which is inappropriate for
arbitration under the UDRP.
2. BLING is a common word, and the <blinge.com>, <blingme.com>, <blingme.org>,
and <blingme.info> domain names are not confusingly similar
to Complainant’s BLINGEE mark.
3.
Respondent conducts a legitimate business under the <blinge.com>, <blingme.com>, <blingme.org>,
and <blingme.info> domain names.
4.
Respondent did not register the <blinge.com>, <blingme.com>,
<blingme.org>, and <blingme.info> domain names
in bad faith.
C. Additional Submissions:
1. In its Additional Submission, Complainant
highlights two indications of Respondent’s bad faith – its pattern of
typosquatting and its knock-off of
Complainant’s website.
2. In its Additional Submission, Respondent
states that a reasonable bystander would not confuse the domain names with
Complainant’s mark, and reiterates that it began using the domain names for
legitimate business before this dispute arose.
FINDINGS
Complainant holds a U.S. Trademark
Registration for BLINGEE in connection with online services in the field of
digital photography, photo enhancement and related social networking. The registration was filed on August 6, 2007
and issued on June 24, 2008, showing a first use in commerce date of January 1,
2007. Complainant also owns a trademark
application for a stylized version of BLINGEE, filed December 22, 2006, and has
operated under BLINGEE.COM since December of 2006.
Respondent filed a trademark application for
BLINGME in June 2008, showing first use in commerce of June 1, 2008. The
application is for the same services as Complainant, though the services are
described differently as “storage and sharing of data.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
PRELIMINARY ISSUE: IS THIS CASE APPROPRIATE FOR UDRP DISPOSTION?
Respondent
argues that this is a trademark dispute and is therefore inappropriate for UDRP
disposition. The Panel disagrees. This is a case where one party holds a U.S.
Trademark Registration and one party does not.
The Respondent here, as in many UDRP cases, is trying to claim trademark
rights in domain names it began using after Complainant. The requisite UDRP analysis below will show
whether Respondent is successful or not.
UDRP case analysis often involves discussion and weighing of alleged
trademark rights, which certainly does not remove such cases from consideration
under the Policy. This case is a typical
candidate for UDRP analysis.
Cases which
have been declined by former UDRP Panels have involved some business
relationship between the parties, which often required additional fact-finding;
such is not the case here.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,452,571 filed August 6, 2007 and issued June 24, 2008). The Panel finds that Complainant’s trademark registration adequately confers rights in the BLINGEE mark to Complainant pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration with the USPTO for the ENTERPRISE mark established the complainant’s rights in the mark); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).
The Panel further determines that
these rights date back to the filing date of Complainant’s trademark
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 the complainant’s trademark rights date back to the application’s
filing date).
Complainant also shows common law
rights in the BLINGEE mark based on its continuous use of the mark in commerce
since December 2006. Complainant has
maintained a website resolving from the <blingee.com> domain name since
then, and attracts three million visitors each month from around the
world. Complainant provided evidence of
name recognition and accolades for the services offered under the
<blingee.com> domain name from early in 2007. The Panel finds that Complainant has
established common law rights in the BLINGEE mark, and that those rights date
back to December 2006, pursuant to Policy ¶ 4(a)(i). See
Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9,
2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC.
mark, it also had common law rights in the BIBBERO mark because it had
developed brand name recognition with the word “bibbero”); see also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum
Apr. 25, 2007) (finding that the complainant could establish common law rights
in its GW BAKERIES mark through consistent and continuous use of the mark,
which helped the mark become distinctive and generate “significant
goodwill”). The Panel notes that Complainant
also provided evidence to the USPTO of first use in commerce as of January 1,
2007.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s BLINGEE mark. The <blinge.com> domain name deletes the last “e” from the mark, and the <blingme.com>, <blingme.org>, and <blingme.info> domain names replace an “e” with an “m.” The Panel finds that these single-letter differences do not sufficiently differentiate the disputed domain names from Complainant’s mark. Each domain name also adds a generic top-level domain (“gTLD”), but the Panel finds these additions irrelevant under the Policy since they are required of all domain names. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel also notes the likelihood of confusing the domain names with Complainant’s mark due to the similarity in sound.
Respondent argues that the disputed domain
names are comprised primarily of the common word BLING and therefore
Complainant cannot claim trademark rights in that word. However, Complainant is not claiming rights
to the word BLING; it is claiming rights to its trademark BLINGEE.
The Panel further notes that this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. The Panel finds that Complainant has met its
burden. See AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant 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.”).
Complainant alleges that Respondent is not,
and has never been, commonly known by the disputed domain names. Complainant claims that Respondent has no
connection with Complainant, and is not authorized to use Complainant’s BLINGEE
mark as a trade name or otherwise. The
WHOIS information for the disputed domain names identifies Respondent as
“Cyberwire LLC,” “Conqueror LLC,” and “Douglas Petrie.” The Panel therefore concludes that Respondent
is not commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii). See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark).
Complainant states that Respondent is using
the disputed domain names in an attempt to pass itself off as Complainant and
sell competing products and services, and provided screen print-outs of its
website as well as Respondent’s website resolving from the disputed domain
name. The Panel notes the similarity of
Respondent’s website to Complainant’s in the look of the site, the look of the
logo, the offering of almost identical services, and the use of similar
“marketing” words on the home page. The
Panel finds that Respondent is attempting to commercially gain from mimicking
Complainant’s site, and selling competing products and services, under the
disputed domain names. Such use of the
disputed domain names constitutes neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (“The
Panel finds that Respondent’s operation of a website virtually identical to
Complainant’s website to offer competing travel reservation services does not
fall within the parameters of a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii)”); see also Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s
attempts to pass itself off as the complainant online, which is blatant
unauthorized use of the complainant’s mark, is evidence that the respondent has
no rights or legitimate interests in the disputed domain name); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
The Panel
notes and discounts Respondent’s argument that it began using the disputed
domain names before this dispute arose; more importantly, Respondent began
using the disputed domain names a year and a half after Complainant began using
it, for the exact same services, in the exact same marketplace, and virtually
copied Complainant’s website.
The Panel further notes that Respondent’s four disputed domain names each contain a misspelled version of Complainant’s BLINGEE mark. The one-letter difference in each domain name constitutes typosquatting, which is the deliberate misspelling of a complainant’s mark in order to capitalize on Internet users’ common typographical errors, additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been ordered by panels in previous cases decided under the UDRP to transfer infringing domain names to the respective complainants in those cases. See AARC, Inc. v. Tubbs; Cyberwire, LLC, D2007-1272 (WIPO Oct. 17, 2007); see also Moneytree, Inc. v. Cyberwire, LLC, FA 1059480 (Nat. Arb. Forum Sept. 28, 2007). While not dispositive, this indicates a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants), see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
The Panel has compared Respondent’s
website with Complainant’s website and notes the similar overall impression
created by Respondent’s later-developed site.
Specifically, the similar wording, sound, coloring, use of stars, look
of the logo, as well as the offering of the exact same services, is likely to
confuse Internet users. The Panel finds
that Respondent is using the disputed domain names to profit off the goodwill
associated with Complainant’s BLINGEE mark, constituting bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See BPI
Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30,
2002) (“Complainants are in the music and entertainment business. The links associated with
<billboard.tv> and <boogie.tv> appear to be in competition for the
same Internet users, which Complainants are trying to attract with the
<billboard.com> web site. There is
clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as
to the source, sponsorship, affiliation, or endorsement of the web site or of a
product or service on the web site.”); see
also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum
May 20, 2007) (finding that the respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
was commercially gaining from the likelihood of confusion between the complainant’s
AIM mark and the competing instant messaging products and services advertised
on the respondent’s website that resolved from the disputed domain name);
see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2006)
(finding that the respondent’s registration and use of the disputed domain
name, which displayed a website virtually identical to the complainant’s
website, constituted bad faith); see also
Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith).
The Panel concludes that Respondent
must have been aware of Complainant’s business and its rights in the BLINGEE
mark based on the similar appearance and promotion of products on Respondent’s
website resolving from the disputed domain names, additional evidence of
Respondent’s bad faith registration and use of the disputed domain names
pursuant to Policy ¶ 4(a)(iii). See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the link between the complainant’s mark and the content
advertised on the respondent’s website was obvious, the respondent “must have
known about the Complainant’s mark when it registered the subject domain
name”).
The Panel further finds bad faith
registration and use based on the typosquatting noted above, pursuant to Policy
¶ 4(a)(iii). See Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent engaged in typosquatting, which is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii)); see also Myspace, Inc. v. Kang,
FA 672160 (Nat. Arb. Forum June 19, 2006)
(“Respondent misspells the Mark with intent to intercept internet users from
Complainant’s web site, given the fact that Complainant’s website is a popular
website and the Disputed Domain Name is a misspelling of the Mark which is
highly likely to occur. This
typosquatting is evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blinge.com>, <blingme.com>, <blingme.org>,
and <blingme.info> domain names be TRANSFERRED from
Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 2, 2008
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