Wall Street Webcasting and Douglas Estadt v. Site Services International c/o Richard Sorensen
Claim Number: FA0704000955052
Complainants are Wall Street Webcasting and Douglas
Estadt (collectively, “Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wsw.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregis.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2007.
On
On April 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 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@wsw.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <wsw.com> domain name is identical to Complainant’s WSW mark.
2. Respondent does not have any rights or legitimate interests in the <wsw.com> domain name.
3. Respondent registered and used the <wsw.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wall Street Webcasting, is a marketing company run by Douglas Estadt, co-Complainant, that uses the WSW mark to provide webcasting services to investment banking firms and other entities. The Panel will hereinafter refer to Wall Street Webcasting and Douglas Estadt collectively as “Complainant.” Complainant conducts over 15,000 live webcasts annually. Complainant has continuously used the WSW mark for over eight years and is commonly known by the mark in the investment banking industry.
Complainant initially registered the <wsw.com> domain name in early April 2004. At some point around September 2006, Respondent took control of the registration of the disputed domain name without Complainant’s knowledge or consent. Complainant no longer has control over the <wsw.com> domain name, but the website at the disputed domain name still displays the same content from when Complainant had control over it.
Respondent has also been subject to another UDRP proceeding,
Olympic Credit Fund, Inc. v Site Services
International c/o Richard Sorensen, FA 910790 (Nat. Arb. Forum
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 not provided any evidence of a trademark
registration for the WSW mark. Under the
Policy, however, Complainant need not hold a trademark registration for the
mark in order to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the complainant need not own a valid
trademark registration for the ZEE CINEMA mark in order to demonstrate its rights
in the mark under Policy ¶ 4(a)(i)); see
also 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).
Complainant has provided exhibits showing its extensive use of the WSW mark in commerce. Complainant is a leading provider of webcasting services to the investment banking industry and its WSW mark is well known in that industry and the general business community. As a result, Complainant’s WSW mark has acquired secondary meaning in connection with Complainant’s webcasting services, and the Panel finds that Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Moreover, Complainant previously held the registration for
the <wsw.com> domain name
before Respondent apparently hijacked it.
The Panel finds that Complainant’s previous registration of the disputed
domain name provides further evidence that Complainant has rights in the mark
pursuant to Policy ¶ 4(a)(i). See Bluegreen Corp. v. eGo, FA 128793
(Nat. Arb. Forum Dec. 16, 2002) (“[T]he
fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”); see also Suburban Ostomy Supply Co. v.
Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s
continuous use in commerce and its prior registration of the [disputed] domain
name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY
mark pursuant to Policy ¶ 4(a)(i).”).
The Panel concludes that Complainant has satisfied this element of the Policy.
Complainant alleges that Respondent lacks rights and
legitimate interests in the contested domain name. It is
Complainant’s responsibility to make a prima facie case in support of
its allegations, and once it does so, the burden shifts to Respondent to show
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant under Policy ¶ 4(c), the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name); see also ALPITOUR S.p.A. v.
Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that
Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent
has no rights to or legitimate interests in the subject domain name and that
once the complainant makes this showing, the burden of production shifts to the
respondent to rebut the complainant’s allegations).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the domain
name at issue. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record indicating that Respondent
is commonly known by the <wsw.com>
domain name, including the WHOIS information, which lists “Site Services
International c/o Richard Sorenson.” Complainant
also alleges that Respondent altered the WHOIS information to list itself as
registrant of the disputed domain name without Complainant’s knowledge. In light of this evidence, the Panel
concludes that Respondent has not established rights or legitimate interests in
the <wsw.com> domain name
pursuant to Policy ¶ 4(c)(ii). See The Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum
Additionally, Respondent’s <wsw.com>
domain name resolves to a website virtually identical to the website
Complainant maintained before Respondent hijacked the disputed domain
name. In Anbex
Inc. v. WEB-Common Technologies Grp., FA 780236 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied this element of the Policy.
Because it appears that Respondent hijacked the <wsw.com> domain name from
Complainant and is using it to operate a website mimicking the content of the
website Complainant previously operated at the disputed domain name, Respondent
has registered and is using the disputed domain name for the primary purpose of
disrupting Complainant’s business according to Policy ¶ 4(b)(iii). See Lambros v.
Brown, FA 198963 (Nat. Arb. Forum Nov. 19,
2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); see
also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508
(Nat. Arb. Forum
In addition, Respondent is attempting to attract, for commercial gain, Internet users to a website virtually identical to Complainant’s former website at the disputed domain name.
Respondent may be profiting from unsuspecting Internet users who believe that Complainant is still affiliated with the content of the website. As a result, Respondent has registered and is using the <wsw.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 8X Entertainment, Inc. v. EXC International AG, WIPO D2005-1126 (Dec. 28, 2005) (transferring the <8x.com> domain name back to the complainant because the respondent had hijacked the domain name and continued to redirect Internet users to the complainant’s website); see also Mezenin v. Baselmans, FA 664060 (Nat. Arb. Forum May 8, 2006) (proceeding with a case involving hijacking and finding that the respondent’s conduct provided evidence of bad faith registration and use under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv)).
Finally, Respondent has been subject to another UDRP
proceeding in which it hijacked a domain name from its rightful owner. See Olympic
Credit Fund, Inc. v Site Services International c/o Richard Sorensen, FA
910790 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied this element of the Policy.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <wsw.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 15, 2007
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