Alexa Internet v. Lepanto c/o Vin Alies
Claim Number: FA0703000945904
Complainant is Alexa Internet (“Complainant”), represented by Kevin
M. Hayes, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alexaresearch.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
The Honorable Richard B. Wickersham, (Ret.), the Honorable Tyrus R. Atkinson, Jr., Esq., and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 28, 2007.
On March 27, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <alexaresearch.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 April 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 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@alexaresearch.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2007, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Honorable Richard B. Wickersham, (Ret.), the Honorable Tyrus R. Atkinson, Jr., Esq., and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alexaresearch.com> domain name is confusingly similar to Complainant’s ALEXA mark.
2. Respondent does not have any rights or legitimate interests in the <alexaresearch.com> domain name.
3. Respondent registered and used the <alexaresearch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Alexa Internet (“Alexa”) is a company widely known for its web traffic data and research. Complainant has registered the ALEXA mark with the United States Patent and Trademark Office (Reg. No. 2,181,470 issued August 11, 1998; Reg. No. 2,189,928 issued September 15, 1998).
Recently, the disputed domain was registered to Speedy Web. When Alexa’s parent company, Amazon.com, contacted Speedy Web to attempt to resolve this matter, Speedy Web transferred the disputed domain name to Respondent, Lepanto. Respondent is using the domain as a parking page, presumably to earn click through fees.
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 has registered the ALEXA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,181,470 issued August 11, 1998; Reg. No. 2,189,928 issued September 15, 1998). These trademark registrations sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
The mere addition of the term “research” to its registered
ALEXA mark in the <alexaresearch.com>
domain name renders the disputed domain name confusingly similar to the
mark. The mere addition of the term
“research” and the generic top-level domain (“gTLD”) “.com” are not
distinguishing differences and thus the <alexaresearch.com>
domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Warner Bros.
Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the
generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish
the domain name from the mark); see also Google
Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the
respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark
where the respondent merely added common terms such as “buy” or “gear” to the
end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.”).
Complainant must first make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Document Tech., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of
the Policy requires that the Complainant prove the presence of this element
(along with the other two), once a Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent is not commonly known by the <alexaresearch.com> domain name, because the WHOIS
information lists the registrant of the domain name as “Lepanto c/o Vin Alies,”
and there is no other evidence in the record indicating that Respondent is
commonly known by the disputed domain name.
Therefore, Respondent does not have rights or legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use); see
also Coppertown Drive-Thru Syst., 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).
Furthermore, Respondent is using the <alexaresearch.com> domain name to maintain a parked commercial web directory of links to third-party websites. Complainant argues that Respondent is deriving commercial benefit from click-through fees it earns from diverting consumers to these websites. Respondent’s diversionary use of the disputed domain name for its own commercial gain does not constitute 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). See 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 Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Respondent’s use of the <alexaresearch.com> domain name to divert Internet users seeking Complainant’s products and services under the ALEXA mark to its own website displaying links to third-party websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel may infer that Respondent receives referral fees for diverting Internet users to other websites and conclude that Respondent is thus taking advantage of the confusing similarity between Complainant’s ALEXA mark and the <alexaresearch.com> domain name, and profiting from the goodwill associated with the mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to the complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alexaresearch.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Richard B. Wickersham, (Ret.), Panelist
The Honorable Tyrus R. Atkinson, Jr., Esq., Panelist
The Honorable Charles K. McCotter, Jr. (Ret.), Panel Chair, for the Panel
Dated: May 16, 2007
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