Match.com, L.L.C. v. Grayson Skaggs
Claim Number: FA1206001447989
Complainant is Match.com, L.L.C. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Grayson Skaggs (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cbemistry.com>, <cbhemistry.com>, <cdhemistry.com>, <cfhemistry.com>, <ch3emistry.com>, <ch3mistry.com>, <ch4emistry.com>, <ch4mistry.com>, <chbemistry.com>, <chdemistry.com>, <che3mistry.com>, <che4mistry.com>, <chedmistry.com>, <chefmistry.com>, <chejmistry.com>, <chekmistry.com>, <chem8istry.com>, <chem8stry.com>, <chem9istry.com>, <chem9stry.com>, <chemi8stry.com>, <chemi9stry.com>, <chemiastry.com>, <chemidstry.com>, <chemiestry.com>, <chemietry.com>, <chemijstry.com>, <chemikstry.com>, <chemilstry.com>, <chemis5ry.com>, <chemis5try.com>, <chemis6ry.com>, <chemis6try.com>, <chemisatry.com>, <chemisdtry.com>, <chemisetry.com>, <chemisftry.com>, <chemisgtry.com>, <chemishry.com>, <chemishtry.com>, <chemist4ry.com>, <chemist4y.com>, <chemist5ry.com>, <chemist5y.com>, <chemist6ry.com>, <chemistdry.com>, <chemistfry.com>, <chemistgry.com>, <chemistgy.com>, <chemisthry.com>, <chemistr4y.com>, <chemistr5y.com>, <chemistr6.com>, <chemistr6y.com>, <chemistr7.com>, <chemistr7y.com>, <chemistrdy.com>, <chemistrfy.com>, <chemistrgy.com>, <chemistrhy.com>, <chemistrj.com>, <chemistrjy.com>, <chemistruy.com>, <chemistry6.com>, <chemistry7.com>, <chemistryg.com>, <chemistryh.com>, <chemistryj.com>, <chemistryt.com>, <chemiswtry.com>, <chemisxtry.com>, <chemisyry.com>, <chemisztry.com>, <chemiustry.com>, <chemiwstry.com>, <chemixstry.com>, <chemizstry.com>, <chemjistry.com>, <chemkistry.com>, <chemlistry.com>, <chemlstry.com>, <chemuistry.com>, <chesmistry.com>, <chewmistry.com>, <chfemistry.com>, <chfmistry.com>, <chgemistry.com>, <chjemistry.com>, <chnemistry.com>, <chsemistry.com>, <chsmistry.com>, <chuemistry.com>, <chwemistry.com>, <chyemistry.com>, <cjhemistry.com>, <cnemistry.com>, <cnhemistry.com>, <cuhemistry.com>, <cxhemistry.com>, <cyemistry.com>, <cyhemistry.com>, <dchemistry.com>, <fchemistry.com>, <fhemistry.com>, <hcemistry.com>, and <matdch.com>, registered with Godaddy.Com, LLC.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 12, 2012, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <cbemistry.com>, <cbhemistry.com>, <cdhemistry.com>, <cfhemistry.com>, <ch3emistry.com>, <ch3mistry.com>, <ch4emistry.com>, <ch4mistry.com>, <chbemistry.com>, <chdemistry.com>, <che3mistry.com>, <che4mistry.com>, <chedmistry.com>, <chefmistry.com>, <chejmistry.com>, <chekmistry.com>, <chem8istry.com>, <chem8stry.com>, <chem9istry.com>, <chem9stry.com>, <chemi8stry.com>, <chemi9stry.com>, <chemiastry.com>, <chemidstry.com>, <chemiestry.com>, <chemietry.com>, <chemijstry.com>, <chemikstry.com>, <chemilstry.com>, <chemis5ry.com>, <chemis5try.com>, <chemis6ry.com>, <chemis6try.com>, <chemisatry.com>, <chemisdtry.com>, <chemisetry.com>, <chemisftry.com>, <chemisgtry.com>, <chemishry.com>, <chemishtry.com>, <chemist4ry.com>, <chemist4y.com>, <chemist5ry.com>, <chemist5y.com>, <chemist6ry.com>, <chemistdry.com>, <chemistfry.com>, <chemistgry.com>, <chemistgy.com>, <chemisthry.com>, <chemistr4y.com>, <chemistr5y.com>, <chemistr6.com>, <chemistr6y.com>, <chemistr7.com>, <chemistr7y.com>, <chemistrdy.com>, <chemistrfy.com>, <chemistrgy.com>, <chemistrhy.com>, <chemistrj.com>, <chemistrjy.com>, <chemistruy.com>, <chemistry6.com>, <chemistry7.com>, <chemistryg.com>, <chemistryh.com>, <chemistryj.com>, <chemistryt.com>, <chemiswtry.com>, <chemisxtry.com>, <chemisyry.com>, <chemisztry.com>, <chemiustry.com>, <chemiwstry.com>, <chemixstry.com>, <chemizstry.com>, <chemjistry.com>, <chemkistry.com>, <chemlistry.com>, <chemlstry.com>, <chemuistry.com>, <chesmistry.com>, <chewmistry.com>, <chfemistry.com>, <chfmistry.com>, <chgemistry.com>, <chjemistry.com>, <chnemistry.com>, <chsemistry.com>, <chsmistry.com>, <chuemistry.com>, <chwemistry.com>, <chyemistry.com>, <cjhemistry.com>, <cnemistry.com>, <cnhemistry.com>, <cuhemistry.com>, <cxhemistry.com>, <cyemistry.com>, <cyhemistry.com>, <dchemistry.com>, <fchemistry.com>, <fhemistry.com>, <hcemistry.com>, and <matdch.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2012 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@cbemistry.com, postmaster@cbhemistry.com, postmaster@cdhemistry.com, postmaster@cfhemistry.com, postmaster@ch3emistry.com, postmaster@ch3mistry.com, postmaster@ch4emistry.com, postmaster@ch4mistry.com, postmaster@chbemistry.com, postmaster@chdemistry.com, postmaster@che3mistry.com, postmaster@che4mistry.com, postmaster@chedmistry.com, postmaster@chefmistry.com, postmaster@chejmistry.com, postmaster@chekmistry.com, postmaster@chem8istry.com, postmaster@chem8stry.com, postmaster@chem9istry.com, postmaster@chem9stry.com, postmaster@chemi8stry.com, postmaster@chemi9stry.com, postmaster@chemiastry.com, postmaster@chemidstry.com, postmaster@chemiestry.com, postmaster@chemietry.com, postmaster@chemijstry.com, postmaster@chemikstry.com, postmaster@chemilstry.com, postmaster@chemis5ry.com, postmaster@chemis5try.com, postmaster@chemis6ry.com, postmaster@chemis6try.com, postmaster@chemisatry.com, postmaster@chemisdtry.com, postmaster@chemisetry.com, postmaster@chemisftry.com, postmaster@chemisgtry.com, postmaster@chemishry.com, postmaster@chemishtry.com, postmaster@chemist4ry.com, postmaster@chemist4y.com, postmaster@chemist5ry.com, postmaster@chemist5y.com, postmaster@chemist6ry.com, postmaster@chemistdry.com, postmaster@chemistfry.com, postmaster@chemistgry.com, postmaster@chemistgy.com, postmaster@chemisthry.com, postmaster@chemistr4y.com, postmaster@chemistr5y.com, postmaster@chemistr6.com, postmaster@chemistr6y.com, postmaster@chemistr7.com, postmaster@chemistr7y.com, postmaster@chemistrdy.com, postmaster@chemistrfy.com, postmaster@chemistrgy.com, postmaster@chemistrhy.com, postmaster@chemistrj.com, postmaster@chemistrjy.com, postmaster@chemistruy.com, postmaster@chemistry6.com, postmaster@chemistry7.com, postmaster@chemistryg.com, postmaster@chemistryh.com, postmaster@chemistryj.com, postmaster@chemistryt.com, postmaster@chemiswtry.com, postmaster@chemisxtry.com, postmaster@chemisyry.com, postmaster@chemisztry.com, postmaster@chemiustry.com, postmaster@chemiwstry.com, postmaster@chemixstry.com, postmaster@chemizstry.com, postmaster@chemjistry.com, postmaster@chemkistry.com, postmaster@chemlistry.com, postmaster@chemlstry.com, postmaster@chemuistry.com, postmaster@chesmistry.com, postmaster@chewmistry.com, postmaster@chfemistry.com, postmaster@chfmistry.com, postmaster@chgemistry.com, postmaster@chjemistry.com, postmaster@chnemistry.com, postmaster@chsemistry.com, postmaster@chsmistry.com, postmaster@chuemistry.com, postmaster@chwemistry.com, postmaster@chyemistry.com, postmaster@cjhemistry.com, postmaster@cnemistry.com, postmaster@cnhemistry.com, postmaster@cuhemistry.com, postmaster@cxhemistry.com, postmaster@cyemistry.com, postmaster@cyhemistry.com, postmaster@dchemistry.com, postmaster@fchemistry.com, postmaster@fhemistry.com, postmaster@hcemistry.com, and postmaster@matdch.com. Also on June 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on July 11, 2012.
On July 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Complainant, Match.com, is an American online dating service business started in April 1995. Employing over 300 people, Complainant operates its service throughout the world. Memberships are offered for free, while subscribers to the services pay a fee for additional service features.
- Complainant operates through the domain names <match.com> and <chemistry.com>, on which Complainant has spent millions of dollars for advertising and marketing in media such as the Internet, television and radio.
- Complainant has obtained registrations with the United States Patent and Trademark Office (“USPTO”) for its MATCH.COM and CHEMISTRY.COM service marks.
- All of the disputed domain names are nearly identical and confusingly similar to at least one of Complainant’s marks. The names differ only by the addition or removal of a character, the transposition of characters or the inclusion of one incorrect character. This represents a classic case of typosquatting, which is an attempt to gain illegitimately from Internet user typing errors.
- Respondent has no rights or legitimate interests in the disputed domain names. Whois information suggests that Respondent is not commonly known as any of those names. Moreover, there is no direct sponsorship or affiliation between Complainant and Respondent, and Complainant has not authorized or given permission for Respondent to use Complainant’s marks in any domain name.
- Respondent uses the disputed domain names to host websites that provide links to third party websites, some of which offer services that compete directly with Complainant’s services. Such use is neither a bona fide offering or goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
- Complainant has sent Respondent a “cease-and-desist” letter to which Respondent has failed to respond. Respondent has also failed to respond to Complainant’s solicitations to resolve the dispute outside of these proceedings. As a result, all of Complainant’s allegations should be accepted as true and the burden is upon Respondent to prove its rights or legitimate interests in the disputed domain names.
- The dates upon which the Respondent registered the disputed domain names were decidedly after the dates upon which Complainant obtained its rights in its corresponding service marks.
- The disputed domain names were registered and are being used in bad faith. Typosquatting is evidence of bad faith. Moreover, Respondent appears to gain commercially through obtaining click-through fees that result from Internet users accessing links on Respondent’s websites that have been reached through confusion with Complainant’s service marks and valid domain names.
- Respondent exhibits a bad faith pattern of registering multiple infringing domain names, not only with respect to Complainant’s marks but with respect to the established marks of third parties.
- The websites connected to some, if not all, of the disputed domain names reference Complainant’s business and services, providing evidence that Respondent was well aware of Complainant’s rights. Also, the fame of Complainant’s marks gave Respondent constructive, if not actual, knowledge of those marks. Furthermore, Respondent has abused Complainant’s affiliate program in bad faith by registering and profiting from the disputed domain names.
- Respondent changed the websites that are connected to the disputed domain names after the filing of this Complaint, which is further evidence of bad faith registration and use.
B. Respondent
- Respondent owns only three of the disputed domain names now, as he let the registration of the others expire on June 9, 2012. The names that Respondent does own do not contain the words “match” or “chemistry” and do not correspond to Complainant’s marks. There is no confusing similarity, and internet users are allowed to click onto a link with an option similar to “did you mean” as offered by Google.
- The disputed domain names were registered rightfully by Respondent as a means to help Complainant. The names route Internet traffic to Complainant’s website in connection with Complainant’s affiliate program, with which Respondent is in full compliance.
- Complainant’s representative is a criminal organization that attempts unfairly to help companies take domain names from rightful registrants. As a disabled combat veteran, Respondent is simply trying to make the Internet a better place.
- Respondent is acting in good faith in sending Internet visitors to Complainant’s websites, and it is Complainant’s representative that is perpetuating an attempt to engage in reverse domain name hijacking.
Complainant, an American company, has operated an online dating service for more than a decade. It has registered with the USPTO the service marks MATCH.COM (e.g., Reg. No. 2,088,545 issued August 19, 1997) and CHEMISTRY.COM (e.g., Reg. No. 3,581,714 issued February 24, 2009).
Respondent is the owner of the disputed domain names, <cbemistry.com>, <cbhemistry.com>, <cdhemistry.com>, <cfhemistry.com>, <ch3emistry.com>, <ch3mistry.com>, <ch4emistry.com>, <ch4mistry.com>, <chbemistry.com>, <chdemistry.com>, <che3mistry.com>, <che4mistry.com>, <chedmistry.com>, <chefmistry.com>, <chejmistry.com>, <chekmistry.com>, <chem8istry.com>, <chem8stry.com>, <chem9istry.com>, <chem9stry.com>, <chemi8stry.com>, <chemi9stry.com>, <chemiastry.com>, <chemidstry.com>, <chemiestry.com>, <chemietry.com>, <chemijstry.com>, <chemikstry.com>, <chemilstry.com>, <chemis5ry.com>, <chemis5try.com>, <chemis6ry.com>, <chemis6try.com>, <chemisatry.com>, <chemisdtry.com>, <chemisetry.com>, <chemisftry.com>, <chemisgtry.com>, <chemishry.com>, <chemishtry.com>, <chemist4ry.com>, <chemist4y.com>, <chemist5ry.com>, <chemist5y.com>, <chemist6ry.com>, <chemistdry.com>, <chemistfry.com>, <chemistgry.com>, <chemistgy.com>, <chemisthry.com>, <chemistr4y.com>, <chemistr5y.com>, <chemistr6.com>, <chemistr6y.com>, <chemistr7.com>, <chemistr7y.com>, <chemistrdy.com>, <chemistrfy.com>, <chemistrgy.com>, <chemistrhy.com>, <chemistrj.com>, <chemistrjy.com>, <chemistruy.com>, <chemistry6.com>, <chemistry7.com>, <chemistryg.com>, <chemistryh.com>, <chemistryj.com>, <chemistryt.com>, <chemiswtry.com>, <chemisxtry.com>, <chemisyry.com>, <chemisztry.com>, <chemiustry.com>, <chemiwstry.com>, <chemixstry.com>, <chemizstry.com>, <chemjistry.com>, <chemkistry.com>, <chemlistry.com>, <chemlstry.com>, <chemuistry.com>, <chesmistry.com>, <chewmistry.com>, <chfemistry.com>, <chfmistry.com>, <chgemistry.com>, <chjemistry.com>, <chnemistry.com>, <chsemistry.com>, <chsmistry.com>, <chuemistry.com>, <chwemistry.com>, <chyemistry.com>, <cjhemistry.com>, <cnemistry.com>, <cnhemistry.com>, <cuhemistry.com>, <cxhemistry.com>, <cyemistry.com>, <cyhemistry.com>, <dchemistry.com>, <fchemistry.com>, <fhemistry.com>, <hcemistry.com>, and <matdch.com>. Respondent registered the disputed domain name, <matdch.com>, on February 19, 2012 and the remaining 105 disputed domain names on June 9, 2011. The disputed domain names resolve to websites that provide links to third party websites, some of which offer services that compete directly with the services offered by Complainant.
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."
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.
As Complainant has furnished the Panel with pertinent evidence (Annex E) of Complainant’s USPTO registrations for the marks MATCH.COM and CHEMISTRY.COM, the Panel concludes that Complainant has rights in those marks sufficient to satisfy Policy paragraph 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also The SANS Inst. v. WhoisGuard, D2007-0426 (WIPO May 19, 2007) (“Complainant has established rights in the SANS mark through registration with the USPTO.“).
A thorough inspection of all 106 disputed domain names reveals to the Panel that none are identical to either of Complainant’s two service marks (CHEMISTRY.COM and MATCH.COM). As contended by Complainant, all of the names vary from the marks by the inclusion, subtraction or substitution of a single character, or the rearranging of characters. Such minimal alteration has been commonly referred to in prior UDRP cases as typosquatting, whereby respondents have hoped to capitalize on Internet user typing errors to gain traffic from users looking for connections to trademarked goods or services. The consensus opinion of those prior cases is that such minor differences do not avoid a finding of confusing similarity between the names in dispute and the corresponding mark. See Gaiam, Inc. v. Domain Mgmt. SPM, FA 1237207 (Nat. Arb. Forum Jan. 19, 2009) (“…the addition of letters or substitution of letters for other characters fails to create a meaningful distinction—the sole product is a typographical error.”); see also Ross-Simons, Inc. v. Domain.Contact, D2003-0994 (WIPO Mar. 3, 2004) (“‘Typosquatting’ is a practice in which a respondent registers domain names with slight misspellings of a complainant's mark to divert internet traffic. There are a substantial number of panel decisions which have found that such domain names are confusingly similar to the marks which they misspell.”).
The only disputed domain name that resembles Complainant’s MATCH.COM mark is, <matdch.com>, and the Panel finds no difficulty in concluding that the two are confusingly similar. The additional “d” does little to distinguish that domain name from the MATCH.COM mark in appearance or pronunciation. Applying the same analysis, the Panel has little difficulty in finding that almost all of the remaining disputed domain names are confusingly similar to Complainant’s CHEMISTRY.COM mark.
However, in its analysis of the such similarity, the Panel has sought to avoid the temptation, brought on by the sheer volume of disputed domain names in this case, to lump all of the those names into a typosquatting continuum that yields the same conclusion. The Panel has attempted to view each disputed domain name in isolation, as if the others did not exist to bias the Panel toward the notion that all would be confusing to a reasonable internet user. The Panel does this noting also that Complainant’s mark is made up of a common word, “chemistry,” as opposed to a fanciful or distinctive term, which would more likely be confused with a domain name bearing a slight alteration. See Bang & Olufsen a/s v. Unasi Inc., D2005-0728 (WIPO Sept. 7, 2005) (“Domain names which differ from a trademark by only minor variations have a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive”); see also Reuters Ltd. v. Global Net 2000, Inc, D2000-0441 (WIPO July 13, 2000).
As a result, two of the disputed domain names, <chefmistry.com> and <chewmistry.com>, stand out to the Panel. Because each of those disputed domain names can be viewed as two terms, the first of which are the common English language words, “chef” and “chew”, respectively, it is unclear to the Panel that consumers would confuse those names with the word, “chemistry” or the mark, CHEMISTRY.COM. See Homer TLC, Inc. v. Andy Dorrani / HomeDept.com Inc., FA 1429319 (Nat. Arb. Forum Mar. 28, 2012) (finding no confusing similarity between <homedept.com> and HOME DEPOT because “dept” created a new abbreviated word as distinct from “depot”); see also eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, D2004-0552 (WIPO Sept. 11, 2004) (find no confusing similarity between <ispinthebottle.com> and the ESPIN THE BOTTLE mark, while stating “…the Panel believes that a single-letter difference does not automatically prove confusing similarity under paragraph 4(a)(i) of the Policy.”); see also Telstra Corp. Ltd. v. kids@m-a-i-l.com 987654321, D2003-0169 (WIPO Apr. 23, 2003) (“The touchstone in determining confusingly similarity is whether the combination of terms used in a domain name has the potential to mislead unsuspecting users.”). Moreover, the Panel is mindful that Complainant shoulders the burden of proof with respect to this issue, as it does with respect to all elements considered under the Policy. See eCrush.com, Inc., supra (“Complainant bears the burden of proof on each element of the Policy.”). For these reasons, the Panel does not find the two aforesaid disputed domain names to be confusingly similar to Complainant’s mark.
Accordingly, the Panel finds that Complainant has proven that the disputed domain names, excepting <chefmistry.com> and <chewmistry.com>, are identical or confusingly similar to either of two service marks (CHEMISTRY.COM or MATCH.COM) in which Complainant has rights.
In the Panel’s opinion, Complainant has sustained a threshold prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant has established its rights in service marks to which almost all of the disputed domain names are confusingly similar and has asserted that no license or permission was granted Respondent to use those service marks in domain names. Respondent must now come forward with specific compelling evidence to rebut that prima facie case. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also 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.”).
Respondent’s rather weak Response offers little credible support for such a rebuttal. There is no assertion that Respondent, or a company that he owns, has been commonly known as any of the various disputed domain names. Likewise, Respondent fails to contend that he is engaged in legitimate noncommercial or fair use of the disputed domain names. Instead, Respondent argues that he is using the names for websites that are intended to benefit Complainant’s business—even though Complainant has never requested assistance from Respondent. On the other hand, Complainant has provided the Panel with concrete evidence (Annex H) that the disputed domain names resolve into websites that display links to third party websites, some of which compete directly with Complainant’s operations. Such use by Respondent does not constitute a bona fide offering of goods or services. See Skyhawke Technologies, LLC v. The Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the [disputed] domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)…”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002).
Respondent claims that he allowed his registrations of the majority of the disputed domain names to expire as of June 9, 2012, but that claim is belied by evidence (Annex I) submitted by Complainant that clearly shows the registration expiration date of the disputed domain names to be either February 19, 2013 or June 9, 2013.
In the alternative, Respondent argues that his website linkage found at the disputed domain names complies with his online affiliation agreement with Complainant. However, Complainant’s submission of that form agreement (Annex M) persuades the Panel that that agreement (under its paragraph 4(c)), if in effect, would explicitly restrict Respondent from using any domain names that incorporate or are confusingly similar to Complainant’s service marks. As noted above, the Panel has found that all but two of the disputed domain names are confusingly similar to Complainant’s marks.
Since Respondent has failed to invoke successfully on his behalf any of the criteria listed in paragraph 4(c) of the Policy or any other convincing theory to support his claim to rights or legitimate interests in the disputed domain names, the Panel concludes that Complainant’s prima facie case remains without effective rebuttal.
Consequently, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the disputed domain names.
Pursuant to Policy paragraph 4(b), Complainant can demonstrate that the disputed domain names were registered and are being used in bad faith if Complainant can show that at least one of the four following circumstances pertains to those names:
(i) circumstances indicating that [respondent has] registered or [respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.
Complainant contends that, not only has Respondent registered multiple domain names that infringe upon Complainant’s service marks, but Respondent also has engaged in the same pattern of illegitimate registration with respect to third parties. In support of that contention, Complainant has presented the Panel with evidence (Annex O) of Respondent’s registrations of domain names such as <equifwx.com>, <grohpon.com> and <expedi8a.com>, which appear to the Panel to be confusingly similar to the well-established service marks EQUIFAX, GROUPON and EXPEDIA, respectively. This undeniable pattern suggests to the Panel that Respondent has registered and is using the disputed domain names in bad faith per Policy paragraph 4(b)(ii). See Citizens Fin. Grp., Inc. and Charter One Fin., Inc. v. DomainPark Ld., FA 1142126 (Nat. Arb. Forum Apr. 8, 2008); see also Time Warner Entm’t Co., L.P. v. HarperStephens, D2000-1254 (WIPO Dec. 13, 2000) (“The Panel believes that the registration of over one hundred such domain names is sufficient to constitute a pattern of conduct.”).
In addition, Complainant has contended, without contradiction from Respondent, that Respondent receives click-through fees from internet traffic drawn to Respondent’s websites found at the disputed domain names. This commercial gain, derived from the likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of those websites, also places Respondent’s actions firmly within the scope of paragraph 4(b)(iv) of the Policy with respect to bad faith registration and use of the disputed domain names. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (“Registration and use of a domain name incorporating a complainant’s mark in order to obtain click-through, referral or other revenue has also been found to constitute evidence of the requisite bad faith.”); see also Symark International Inc. v. Gary McCurty, WIPO D2005-0235 (June 15, 2005).
Respondent’s contention that he is simply rerouting internet users to Complainant’s websites is of no moment, because that action still constitutes bad faith registration and use of the confusingly similar disputed domain names under the aforesaid paragraph 4(b)(iv), so long as he shares in click-through fees in doing so.
Therefore, the Panel concludes that Complainant has proven that the disputed domain names were registered and are being used in bad faith.
Since the Panel has determined that Complainant has succeeded in demonstrating that 104 of 106 disputed domain names should be transferred, the Panel finds no merit in Respondent’s accusations that Complainant or Complainant’s representative has engaged in an attempt at reverse domain name hijacking in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED with respect to <cbemistry.com>, <cbhemistry.com>, <cdhemistry.com>, <cfhemistry.com>, <ch3emistry.com>, <ch3mistry.com>, <ch4emistry.com>, <ch4mistry.com>, <chbemistry.com>, <chdemistry.com>, <che3mistry.com>, <che4mistry.com>, <chedmistry.com>, <chejmistry.com>, <chekmistry.com>, <chem8istry.com>, <chem8stry.com>, <chem9istry.com>, <chem9stry.com>, <chemi8stry.com>, <chemi9stry.com>, <chemiastry.com>, <chemidstry.com>, <chemiestry.com>, <chemietry.com>, <chemijstry.com>, <chemikstry.com>, <chemilstry.com>, <chemis5ry.com>, <chemis5try.com>, <chemis6ry.com>, <chemis6try.com>, <chemisatry.com>, <chemisdtry.com>, <chemisetry.com>, <chemisftry.com>, <chemisgtry.com>, <chemishry.com>, <chemishtry.com>, <chemist4ry.com>, <chemist4y.com>, <chemist5ry.com>, <chemist5y.com>, <chemist6ry.com>, <chemistdry.com>, <chemistfry.com>, <chemistgry.com>, <chemistgy.com>, <chemisthry.com>, <chemistr4y.com>, <chemistr5y.com>, <chemistr6.com>, <chemistr6y.com>, <chemistr7.com>, <chemistr7y.com>, <chemistrdy.com>, <chemistrfy.com>, <chemistrgy.com>, <chemistrhy.com>, <chemistrj.com>, <chemistrjy.com>, <chemistruy.com>, <chemistry6.com>, <chemistry7.com>, <chemistryg.com>, <chemistryh.com>, <chemistryj.com>, <chemistryt.com>, <chemiswtry.com>, <chemisxtry.com>, <chemisyry.com>, <chemisztry.com>, <chemiustry.com>, <chemiwstry.com>, <chemixstry.com>, <chemizstry.com>, <chemjistry.com>, <chemkistry.com>, <chemlistry.com>, <chemlstry.com>, <chemuistry.com>, <chesmistry.com>, <chfemistry.com>, <chfmistry.com>, <chgemistry.com>, <chjemistry.com>, <chnemistry.com>, <chsemistry.com>, <chsmistry.com>, <chuemistry.com>, <chwemistry.com>, <chyemistry.com>, <cjhemistry.com>, <cnemistry.com>, <cnhemistry.com>, <cuhemistry.com>, <cxhemistry.com>, <cyemistry.com>, <cyhemistry.com>, <dchemistry.com>, <fchemistry.com>, <fhemistry.com>, <hcemistry.com>, and <matdch.com>. Accordingly, it is Ordered that those domain names be TRANSFERRED from Respondent to Complainant.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED with respect to <chefmistry.com> and <chewmistry.com>. Accordingly, it is Ordered that those domain names REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: August 3, 2012
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