Cotterweb Enterprises Inc. v.
Claim Number: FA0810001227142
PARTIES
Complainant is Cotterweb Enterprises Inc. (“Complainant”), represented by John
Pickerill, of Fredrikson & Byron P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iboxdollars.com>, registered with Compana, LLC.
PANEL
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.
Héctor A. Manoff as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 30, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 2, 2008.
On October 2, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <iboxdollars.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 October 10, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 30, 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@iboxdollars.com by
e-mail.
A timely Response was received and determined to be complete on October 30, 2008.
A timely Additional Submission was submitted by Complainant and
determined to be complete on November 4, 2008.
On November 6, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Héctor A. Manoff as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant makes the following assertions:
1. Complainant has obtained a trademark
registration for INBOXDOLLARS, and has also common law trademark rights due to
its continued use since June 30, 2000.
2. Complainant argues that the fact that it has
a trademark registration for INBOXDOLLARS mark with the United States Patent
and Trademark Office (“USPTO”) is prima
facie evidence of the validity and distinctiveness of the registered mark.
3. The disputed domain name is virtually
identical and confusingly similar to the INBOXDOLLARS® trademark.
4. Complainant sent to Respondent a cease and
desist letter on May 7, 2008, which was unanswered at the time this complaint
was filed.
5. Respondent has no rights or legitimate
interest in the domain name at issue.
6. Respondent has no relationship with
Complainant.
7. Respondent has not used the domain name in
good faith and in connection with a bona fide offering of goods or services.
8. Respondent has never been commonly known by
the domain name iboxdollars.com or the mark IBOXDOLLARS and has never acquired
any trademark rights in the name or related marks.
9. Respondent is not making legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain.
10. Respondent registered and uses the domain
name iboxdollars.com in bad faith. In this regard, Respondent practices typo
squatting, which involves taking advantage of simple misspellings of a mark to
divert Internet users searching for the trademark owner’s website to the
squatter’s, which in turn usually redirects the Internet user to commercial
websites of the trademark owner’s competitors, which feature competing
services.
B. Respondent
Respondent contends as follows:
1. The disputed domain is not confusingly
similar or identical to any trademark in which Complainant has rights.
2. Complainant’s mark is formed by two generic
terms, which failed to obtain the necessary secondary meaning and association
in the minds of consumers to link those generic terms to its goods and
services.
3. Due to the several marks that include the
terms “inbox”, the Respondent contends that when a crowded field exists where
many different sources use similar marks, the presumption is that consumers
will more carefully consider distinctions between putative marks and will not
be easily confused.
4. Respondent has rights and a legitimate
interest in the disputed domain name.
5. Complainant has not demonstrated that the
disputed domain name was registered and is being used in bad faith.
6. Respondent is the registrant of thousands of
domain names. Registering such terms to which no other party can claim
exclusive use is a legitimate business and done in good faith.
7. Respondent did not register the disputed
domain name to sell to Complainant or any other party nor has there been any
such allegation by Complainant.
C. Additional Submissions
In its Additional Submission, Complainant essentially restated the arguments initially made, cited additional precedents in its support and contested Respondent’s arguments.
FINDINGS
Based upon the facts and arguments presented to it, the Panel finds that:
1. Respondent’s <iboxdollars.com>
domain name is confusingly similar to Complainant’s INBOXDOLLARS trademark.
2. Respondent does not have any
rights or legitimate interests in the <iboxdollars.com> domain name.
3. Respondent registered and used
the <iboxdollars.com> domain name in bad faith.
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.
Complainant registered its <inboxdollars.com> domain name
on June 30, 2000, and has established
rights pursuant to Policy ¶ 4(a)(i) in the INBOXDOLLARS trademark through
registration of the mark with the USPTO (Reg. No. 3,382,014, filed September 13, 2006, issued February 12, 2008). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
The <iboxdollars.com> domain name was registered on June 3, 2005, which is prior to the registration date of the Complainant’s trademark. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
The <iboxdollars.com> domain name would be identical to the INBOXDOLLARS mark
but for the omission of the letter “n” in Complainant’s mark and the inclusion
of the generic top level domain (“gTLD”) “.com.” In this regard, it has been established that
the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis. 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 Granarolo S.p.A. v. Dinoia, FA
649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com>
domain name was confusingly similar to the complainant’s registered G GRANAROLO
mark); see also Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the
addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel has considered Respondent’s argument that contends that the <iboxdollars.com>
domain name is comprised of common, descriptive terms and as such cannot be
found to be confusingly similar to Complainant’s mark. However, it does not
agree with Respondent, since such a determination is not necessary under Policy
¶ 4(a)(i) as this portion of the Policy considers only
whether Complainant has rights in the mark and whether the disputed domain name
is 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.”).
Once Complainant makes a prima facie case in support
of its allegations, the burden shifts to Respondent to show that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”).
According to the evidence in the record,
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies
Respondent with the contact information for the disputed domain name under the
alias “Texas International Property Associates –NA NA.” Additionally, Respondent does not address
this argument in its Response. See Educ.
Broad. Corp. v. DomainWorks Inc.,
FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that
the respondent was not commonly known by the <thirteen.com> domain name
based on all evidence in the record, and the respondent did not counter this
argument in its response); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant states that the <iboxdollars.com> domain name is being used to maintain a website that
displays links that redirect Internet users interested in Complainant’s
services to sites offering similar services in competition with
Complainant. Moreover, Complainant proved
that some of the links on Respondent’s website are labeled with the words
“INBOX DOLLAR,” generating even more confusion for Internet users.
On the other hand,
Respondent contends that it contracts out to third-parties to provide it with
links and advertisements and therefore does not have control over the use of
its website. The Panel finds that this argument is misplaced as it determines
that Respondent remains responsible for the content posted to its
websites. See Netbooks, Inc. v. Lionheat Publ’g,
FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that
Respondent is responsible for the content of any website using the domain name
at issue, and cannot pass that responsibility off to its registrar or domain
name service provider.”); see also StaffEx
Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent
has alleged that the registrar, GoDaddy, has posted these [competing] links for
the website associated with the Domain Name.
However, the Panel finds this is no excuse and holds Respondent
accountable for the content posted to the site that resolves from the Domain
Name.”). See also Charles Letts & Co Ltd. v. Citipublications, FA
692150 (Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking
of a domain name containing the complainant’s mark for the respondent’s commercial
gain did not satisfy Paragraph 4(c)(i) or 4(c)(iii) of the Policy).
Additionally, Respondent acknowledged that
it is financially benefiting from these links through some form of referral
fees. Under these circumstances, the
Panel finds that Respondent’s use of the <iboxdollars.com> domain name constitutes neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007)
(finding that where a respondent has failed to offer any goods or services on
its website other than links to a variety of third-party websites, it was not
using a domain name in connection with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)); see also
ALPITOUR S.p.A. v. balata inc,
FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly
similar <viaggidea.com> domain
name to operate a website that
features links to various commercial websites from which Respondent presumably
receives referral fees….is neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair
use pursuant to Policy ¶ 4(c)(iii).”); see
also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent was not using the <tesco-finance.com>
domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by maintaining a web page with
misleading links to the complainant’s competitors in the financial services
industry).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
It has been proved that the <iboxdollars.com> domain name resolves to a website displaying
a series of links that redirect Internet users to Complainant’s direct competitors.
Many of the links offer services and products that compete with those offered
under Complainant’s INBOXDOLLARS mark.
As a result, the Panel finds that Respondent has registered and is using
the disputed domain name for the purpose of disrupting Complainant’s business
and accordingly in bad faith pursuant to Policy ¶ 4(b)(iii). See Jerie
v. Burian, FA 795430
(Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and
used the <sportlivescore.com> domain name in order to disrupt the
complainant’s business under the LIVESCORE mark because the respondent was
maintaining a website in direct competition with the complainant); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Moreover, the fact that Respondent has been subject to numerous prior
UDRP proceedings in which the disputed domain name was transferred (See JELD-WEN, inc. v.
And finally, the Panel agrees with the Complainant’s argument that
Respondent had actual knowledge of Complainant’s rights in the INBOXDOLLARS
mark when it registered and as it has used the disputed domain name. Complainant points out, and it can be seen
from the evidence in record, that the links on the website that resolves from
the <iboxdollars.com> domain
name contain the title “INBOX DOLLAR”. Moreover,
Complainant highlights that its <inboxdollars.com> domain name was registered
roughly four years before the disputed domain name and its recently issued federal
trademark registration. Therefore, the Panel
concludes that Respondent at least had constructive knowledge of Complainant’s
trademark INBOXDOLLARS. Registration
of a domain name that is confusingly similar to another’s mark, despite
knowledge of the mark holder’s rights, is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”).
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 <iboxdollars.com> domain name be TRANSFERRED
from Respondent to Complainant.
Héctor A. Manoff, Panelist
Dated: November 20, 2008
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