Popular
Enterprises, LLC v. Yukihiro Aoki
Claim Number: FA0701000887642
PARTIES
Complainant is Popular Enterprises, LLC (“Complainant”), represented by Brett A. August, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Yukihiro Aoki (“Respondent”), Simofureimati867-7, Isesakisi, Gunma 3792214, JP.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netstr.com>, registered with Gmo
Internet, Inc. d/b/a Onamae.com and Discount-Domain.com.
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.
Ho Hyun Nahm as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 22, 2007.
On February 22, 2007, Gmo Internet, Inc. d/b/a Onamae.com and
Discount-Domain.com confirmed by e-mail to the National Arbitration
Forum that the <netstr.com> domain name is registered with Gmo Internet, Inc. d/b/a Onamae.com and
Discount-Domain.com and that Respondent is the current registrant of the
name. Gmo
Internet, Inc. d/b/a Onamae.com and Discount-Domain.com has verified
that Respondent is bound by the Gmo Internet,
Inc. d/b/a Onamae.com and Discount-Domain.com 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 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 15, 2007 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@netstr.com by e-mail.
A timely Response was received and determined to be complete on March 13, 2007.
An Additional Submission was received from
Complainant on March 19, 2007, which was found submitted timely.
On March 29, 2007, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho
Hyun Nahm as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
makes the following assertions:
1. Respondent’s
<netstr.com> domain name is
confusingly similar to Complainant’s NETSTER mark.
2. Respondent
does not have any rights or legitimate interests in the <netstr.com> domain name.
3. Respondent
registered and used the <netstr.com>
domain name in bad faith.
B. Respondent makes the following assertions:
Respondent registered the Disputed Domain Name simply because it
combined a trendy word
"net," and "str," his children's first initials, and thus he has legitimate interests in the
Disputed Domain Name..
C. Additional
Submissions
Complainant makes
the following assertions in the
additional submissions:
Since Complainant adopted, began using, and applied to register its NETSTER Mark before Respondent registered the Disputed Domain Name, it was Respondent's duty to select a mark that was not confusingly similar to NETSTER. Given the fame of the NETSTER Mark, Respondent's claim that he registered the Disputed Domain Name simply because it combined the "trendy word," "net," and "str," his children's first initials, is not credible.
If Respondent had done any sort of
trademark search or Internet search in the .com space prior to registering the Disputed Domain Name, he would almost
certainly have located Netster and the <netster.com> homepage.
FINDINGS
Complainant, Popular Enterprises,
LLC, is a leading supplier of high-value Internet traffic to advertisers. In November 2001, Complainant adopted the
NETSTER mark and registered the <netster.com> domain name to provide
users with accurate and content-relevant searches from a base of over eight
billion websites. Complainant currently
holds a registered trademark with the United States Patent and Trademark Office
(“USPTO”) for the NETSTER mark (Reg. No. 2,769,891 issued September 30, 2003).
Respondent, Yukihiro Aoki,
registered the <netstr.com>
domain name on November 11, 2004.
Respondent is using the disputed domain name to host a web site that
links users to other commercial websites.
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 Complainant should 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;
(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.
In comparison
with the disputed domain name <netstr.com>
and Complainant’s NETSTER mark, the portion <.com> in the disputed domain name is considered as being non-distinctive and thus
should not be considered for determining similarity of marks. Both marks appear
confusingly similar to each other in terms of appearance, as the disputed
domain name constitutes a close misspelling of Complainant’s NETSTER
mark, only deleting the second letter "e" from NETSTER. Although the vowel ‘e’ is omitted in the second syllable in the disputed
domain name, the disputed domain name is likely to be pronounced as confusingly
similar to the NETSTER mark, and
thus the Disputed Domain Name
is confusingly similar to the NETSTER Mark in terms of pronunciation. As such,
the Panel finds that the disputed domain name is confusingly similar to
the NETSTER Mark. (See Popular Enterprises, LLC v. Click Cons Ltd.,
Case No. FA0701000890762 (NAF, March 2, 2007)
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent makes
assertions that he registered the Disputed Domain Name simply because it
combined the "trendy word," "net," and "str," his
children names' first initials. However, the Panel cannot find that
Respondent has used or developed a web site located at the Disputed Domain Name
for his children related contents. The Panel cannot find either that the
combination of the word ‘NET’ and initials of Respondent’s three children names
‘STR’ constitutes any inherent rights or legitimate interests for Respondent.
Taking the reasons above into account including
its lack of rights in the NETSTER Mark and of affiliation with Netster as well as its failure to make
legitimate use of the web site located at the Disputed Domain Name, the
Panel concludes that Respondent does not have rights or a legitimate
interest in the Disputed Domain
Name.
The Panel therefore finds that
Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s use of the NETSTER mark preceded
Respondent’s registration of the <netstr.com>
domain name by over three years with its
registration of the NETSTER mark before
the USPTO preceding Respondent’s
registration of the <netstr.com>
domain name by over one year. Respondent’s conduct in using the disputed domain name which is a mere
misspelling of Complainant’s NETSTER mark by simply deleting the second letter ‘e’ to host a website offering links
to various categorized commercial sites enables the Panel to assume Respondent’s prior knowledge and intent to trade on Complainant’s trademarks.
As such, the Panel finds that Respondent also had constructive
knowledge of Netster's rights.
Respondent therefore registered the Disputed Domain Name to take advantage of the value and goodwill
associated with the NETSTER Mark, which constitutes bad faith. (See Ticketmaster Corp. v. Spider Web Design,
Inc., Case No. D2000-1551 (WIPO Feb. 4, 2001).
The Panel finds Respondent has
allowed the domain name in dispute to be used for diverting Internet traffic that was initially
intended for Complainant. (on this
kind of bad faith behavior, see WIPO Case No. D2001-0193 Microsoft Corporation
v. Mindkind; WIPO Case No. D2000-0049 Tata Sons
Ltd. v. The Advanced Information Technology Association; WIPO Case No.
D2001-0673 America Online, Inc. v. Exit New York Magazine Corp., a.k/a
Exit Magazine Corp.; WIPO Case No. D2000-1206 Buy As You View
Limited v. Kevin Green; WIPO Case No. D2002-1098 FINAXA Societe
Anoyme v. James Lee; Deloitte
Touche Tohmatsu v. Chan, WIPO case
No. D2003-0584).
Respondent’s conduct in using
the disputed domain name, which is a mere misspelling Complainant’s
NETSTER mark by simply deleting the
second letter ‘e,’ to host a website offering various categorized commercial
sites also constitutes typosquatting, which should be recognized as bad
faith registration and use. The reason why Respondent’s <netstr.com> domain name can be
characterized as typosquatting is because
Respondent may benefit from a
potential typographical error made by Internet users. (See Dermalogica,
Inc. v. Domains to Develop, FA 175201; NAF Sept. 22, 2003: Zone
Labs, Inc. v. Zuccarini, FA 190613;
NAF Oct. 15, 2003).
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 <netstr.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: April
9, 2007
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