InfoSpace, Inc. v. Mahmoud Nadim
Claim
Number: FA0402000237450
Complainant is InfoSpace, Inc. (“Complainant”),
Bellevue, WA, represented by Gerard A.
Taylor, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA
98104. Respondent is Mahmoud Nadim (“Respondent”), P.O. Box
No. 206, Dhaka, 21014 BD.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <dogspile.com> and <wwwdogpile.com>,
registered with Enom, Inc.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 13, 2004; the Forum received a hard copy of the
Complaint on February 17, 2004.
On
February 19, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <dogspile.com> and <wwwdogpile.com> 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
February 19, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 10, 2004 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@dogspile.com and
postmaster@wwwdogpile.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 18, 2004 , pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed
James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <dogspile.com> and
<wwwdogpile.com> domain names are confusingly similar to
Complainant’s DOGPILE mark.
2. Respondent does not have any rights or
legitimate interests in the <dogspile.com> and <wwwdogpile.com>
domain names.
3. Respondent registered and used the <dogspile.com>
and <wwwdogpile.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the owner of two United States Patent and Trademark Office (“USPTO”) trademark
registrations for the DOGPILE mark.
These registrations include numbers 2456655, registered on June 5, 2001,
and 2401276, registered on November 7, 2000.
Complainant, through its wholly owned subsidiary, Go2Net, Inc., has been
using the trademark DOGPILE since November of 1996, in connection with computer
programs and telecommunications services, including Internet search services,
in the United States and worldwide.
Respondent
registered the disputed domain name on November 20, 2000. Respondent is using the domain names in
connection with web indexing and search services, which generate traffic to the
websites attached to their respective domain names. Once users arrive at the attached sites, pop-up advertisements
are displayed.
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.
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
has established rights in the DOGPILE mark through multiple registrations with
the USPTO and continuous use in interstate commerce since 1996. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also 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 disputed
domain names, <dogspile.com> and <wwwdogpile.com>,
are confusingly similar to Complainant’s DOGPILE mark. The former name merely adds the letter “s”
to Complainant’s mark, which is not sufficient to create a distinction between
the domain name and Complainant’s mark.
The latter name is a classic case of typosquatting as Respondent has
incorporated Complainant’s DOGPILE mark in its entirety and merely omitted the
period between the letters “www” and the domain name. Typosquatting upon Complainant’s registered mark renders the name
confusingly similar to the mark. See Nat’l
Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to Complainant’s “National Geographic” mark); see also Blue Cross & Blue Shield Ass’n v.
InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that
a domain name which merely adds the letter ‘s’ to Complainant’s mark is
sufficiently similar to the mark to cause a likelihood of confusion among the
users of Complainant’s services and those who were to view a web site provided
by Respondent accessed through the contested domain name); see also Nikon,
Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that
confusing similarity under the Policy is decided upon the inclusion of a
trademark in the domain name); see also Marie Claire Album v. Blakely,
D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are
not distinct in the "Internet world" and thus Respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to Complainant's
MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA
128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
failed to respond to the Complaint. As
a result, the Panel concludes that Respondent lacks rights to and legitimate
interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Respondent is
not authorized by Complainant to use the DOGPILE mark and the record fails to
indicate that Respondent is commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and
legitimate interests in the domain name because Respondent was not authorized
by Complainant to use its trademarks and the mark was distinct in its nature,
such that one would not legitimately choose it unless seeking to create an
impression of an association with Complainant); see also Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Furthermore,
Respondent is not using the disputed domain names in connection with 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) because
both names are typosquatted versions of Complainant’s federally registered
DOGPILE mark. Moreover, the domain
names direct Internet users to a series of pop-up advertisements that generate
revenue for Respondent. See RE/MAX Int’l, Inc. v. Seocho, FA 142046
(Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or
legitimate interests in the <wwwremax.com> domain name as it is merely
using Complainant’s mark to earn profit from pop-up advertisements); see
also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
no rights or legitimate interests where Respondent used the typosquatted
<wwwdewalt.com> domain name to divert Internet users to a search engine
webpage, and failed to respond to the Complaint); see also Pioneer Hi-Bred
Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that
Respondent did not have rights or legitimate interests in a domain name that
used Complainant’s mark and redirected Internet users to website that pays
domain name registrants for referring those users to its search engine and
pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406
(Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed
domain name, a simple misspelling of Complainant’s mark, to divert Internet
users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also Bank of
Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003) (finding that Respondent’s use of infringing domain names to direct
Internet traffic to a search engine website that hosted pop-up advertisements
was evidence that Respondent lacked rights or legitimate interests in the
domain name).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv) by using the names to intentionally attract Internet users to
Respondent’s websites, for the purpose of earning revenue through
advertisements, by creating a likelihood of confusion with Complainant’s
DOGPILE mark. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website,
presumably receiving a portion of the advertising revenue from the site by
directing Internet traffic there, thus using a domain name to attract Internet
users for commercial gain); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
bad faith where Respondent attracted users to advertisements).
In addition,
both disputed domain names are merely typosquatted versions of Complainant’s
DOGPILE mark, which itself evidences bad faith registration and use. See
Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“[I]n typosquatting cases, such as this one, it
would be difficult for Respondent to prove to the Panel that it did not have
actual knowledge of Complainant’s distinctive MEDLINE mark when it registered
the infringing <wwwmedline.com> domain name.”)
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <dogspile.com> and <wwwdogpile.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated:
March 26, 2004
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