Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev
Claim Number: FA1006001327838
Complainant is Ancestry.com Operations Inc. (“Complainant”), represented by Alexis
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.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 2, 2010.
On Jun 03, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.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 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@familytreemakers.com, postmaster@myfamly.com, postmaster@myfamil.com, postmaster@ancesry.com, postmaster@ancesty.com and postmaster@ancester.com. Also on June 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2010, 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" through submission of a Written Notice, as defined in Rule 1. 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 <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names are confusingly similar to Complainant’s ANCESTRY, FAMILY TREE MAKER and MYFAMILY.COM marks.
2. Respondent does not have any rights or legitimate interests in the <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names.
3. Respondent registered and used the <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ancestry.com Operations Inc., offers an online resource for Internet users for genealogical (family history) services. Complainant has established its rights in the ANCESTRY mark due to its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,577,711 issued January 16, 1990). Complainant has also established its rights in the MYFAMILY.COM mark through its trademark registration with the USPTO (Reg. No. 2,445,499 issued April 24, 2001). Complainant has established common law rights in its FAMILY TREE MAKER via its continuous use and secondary meaning acquired in connection with online genealogical resources for managing and recording family historical data since October 4, 1989.
Respondent, Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, registered the <familytreemakers.com> domain name on September 27, 2000, the <myfamly.com> domain name on July 2, 2001, the <myfamil.com> domain name on June 3, 2001, the <ancesry.com> domain name on October 25, 2001, the <ancesty.com> domain name on October 26, 2000, and the <ancester.com> domain name on February 15, 2000. The disputed domain names each resolve to websites that display links to third-party websites 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.
Complainant asserts it has rights in its ANCESTRY mark due to its registration with the USPTO (Reg. No. 1,577,711 issued January 16, 1990) and its MYFAMILY.COM due to its registration with the USPTO (Reg. No. 2,445,499 issued April 24, 2001). The Panel finds that Complainant’s registrations of its ANCESTRY and MYFAMILY.COM marks with the USPTO are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant does not have a trademark registraton for the FAMILY TREE MAKER mark with the USPTO. However, the Panel finds trademark registration unnecessary where Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant asserts it has common law rights in the FAMILY TREE MAKER mark through its continuous use in commerce since 1989 and the subsequent secondary meaning it has acquired through its use of the mark. Complainant offers computer software in an online resource for managing and recording genealogical historical data related to the mark. The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the mark to establish common law rights in the FAMILY TREE MAKER mark under Policy ¶ 4(a)(i) dating back to October 4, 1989. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant
asserts that Respondent’s <familytreemakers.com> domain name is
confusingly similar to its FAMILY TREE MAKER mark. Complainant contends that Respondent’s
disputed domain name omits the spaces between terms of the mark, adds a letter to
the mark (“s”), and adds the generic top-level domain (“gTLD”) “.com.” Complainant contends that Respondent’s disputed domain
name lacks sufficient differentiation from Complainant’s mark. See
Complainant
further asserts that Respondent’s <myfamly.com> and
<myfamil.com> domain names are confusingly similar to its MYFAMILY.COM
mark. Complainant contends that
Respondent’s disputed domain names each merely omit a letter within the mark
(“i” and “y” respectively). Complainant
argues that this minor change is not sufficient to render Respondent’s disputed
domain names distinct from Complainant’s mark. See Pfizer Inc. v. BargainName.com,
D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name
was confusingly similar to the complainant’s PFIZER mark, as the respondent
simply omitted the letter “i”); see
also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb.
Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain
name was confusingly similar to the complainant’s HACRES mark because it
omitted the letter “e” from the mark and added the generic top-level domain
“.com”); see also Trip Network Inc. v. Alviera, supra.
The Panel finds Respondent’s <myfamly.com> and <myfamil.com> domain names
are confusuingly similar to Complainant’s MYFAMILY.COM mark pursuant to Policy ¶ 4(a)(i).
Lastly,
Complainant asserts that Respondent’s <ancesry.com>, <ancesty.com>
and <ancester.com> domain names are confusingly similar to
Complainant’s ANCESTRY mark. Complainant contends that Respondent’s
disputed domain names each omit a letter within the mark (“t”, “r”, and “y”
respectively) and each adds the gTLD “.com.”
Complainant contends that these changes are insufficient to distinguish
Respondent’s disputed domain names from Complainant’s mark. See Pfizer Inc. v. BargainName.com, supra; see also Hallelujah
Acres, Inc. v. Manila Indus., Inc., supra;
see also Trip Network
Inc. v. Alviera, supra. The Panel finds Respondent’s <ancesry.com>, <ancesty.com> and
<ancester.com> domain names are confusuingly similar to
Complainant’s ANCESTRY mark pursuant to Policy
¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found this allegation sufficient to establish a prima facie case against Respondent under Policy ¶ 4(a)(ii). Once the prima facie case is established, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. Respondent has failed to respond to this proceeding. The Panel has the discretion to view Respondent’s failure to respond as evidence of Complainant’s allegation or to view the evidence in the record under Policy ¶ 4(c) to determine if Respondent has rights or legitimate interests in the disputed domain names.
See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information for the <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names list the registrant for each as “Nadeem Qadir aka NA Seocho c/o NA aka Bladimir Boyiko aka Free Domains Parking c/o Andrey Vasiliev” which indicates that Respondent is not commonly known by the disputed domain names. Respondent has not offered any evidence to suggest that it satisfies Policy ¶ 4(c)(ii) in this case. Furthermore, Complainant asserts Respondent is not licensed or otherwise authorized to use any of the ANCESTRY, FAMILY TREE MAKER and MYFAMILY.COM marks. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Respondent uses the <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names for web directories each with links to third-party competitors of Complainant. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a making legitimate noncommercial or fair use under 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 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)”).
Respondent’s <myfamly.com>, <myfamil.com>,
<ancesry.com>, <ancesty.com> and <ancester.com>
domain names are alleged by Complainant to be evidence of typosquatting.
Complainant contends that these disputed domain names are intentional
misspellings of its ANCESTRY and MYFAMILY.COM marks. Complainant further
asserts that Respondent is capitalizing on these misspellings to misdirect
Internet users seeking Complainant’s services.
The Panel finds that this constitutes the practice of typosquatting,
which is evidence that Respondent lacks rights and legitimate interests in the <myfamly.com>, <myfamil.com>, <ancesry.com>,
<ancesty.com> and <ancester.com> domain names
under Policy ¶ 4(a)(ii). 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 Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent exhibits a pattern of registering infringing domain names due to the registration and use of five disputed domain names that are confusingly similar to Complainant’s ANCESTRY and MYFAMILY.COM marks. The Panel finds Respondent’s pattern of registration and use of the <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names constitute bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Prior panels have found a respondent’s use of confusingly
similar domain names to feature hyperlinks to Complainant’s competitors
constitutes a disruption of a complainant’s business. This Panel has previously
found that Respondent’s disputed domain names are confusingly similar to
Complainant’s marks, and that the resolving websites from the disputed domain
names display links to third-parties which include Complainant’s competitors.
As such, the Panel finds Respondent’s use of the <familytreemakers.com>, <myfamly.com>, <myfamil.com>,
<ancesry.com>, <ancesty.com> and <ancester.com>
domain names disrupts Complainant’s genealogical business and constitutes bad
faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd.
v. Aston, FA 593977 (Nat. Arb.
Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert
Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”);
see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006)
(finding that the respondent engaged in bad faith registration and use pursuant
to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names).
Complainant asserts that the confusingly similar disputed
domain name will confuse Internet users seeking the goods provided by
Complainant. Internet users may become
confused as to Complainant’s authorization of or affiliation with the website
resolving from the disputed domain name.
Complainant further asserts that Respondent profits from this confusion
through receipt of click-through fees when Internet users click on the
displayed third-party links. The Panel
finds Respondent’s presumed commercial gain from a confusingly similar disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel has previously concluded that Respondent is
engaged in the practice of typosquatting through the use of the <myfamly.com>, <myfamil.com>, <ancesry.com>,
<ancesty.com> and <ancester.com> domain names. The Panel finds that this practice is stand
alone evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain
Registration
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <familytreemakers.com>, <myfamly.com>, <myfamil.com>, <ancesry.com>, <ancesty.com> and <ancester.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2010
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