SITTERCITY INCORPORATED v. PrivacyProtect.org / Domain Admin
Claim Number: FA1205001444040
Complainant is SITTERCITY INCORPORATED (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is/are <sitercity.com>, <siittercity.com>, and <wwwsittercity.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 16, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@sitercity.com, postmaster@siittercity.com, and postmaster@wwwsittercity.com. Also on May 16, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SITTERCITY mark (e.g., Reg. No. 3,029,158 filed January 3, 2005; registered December 13, 2005) and its SITTERCITY.COM mark (Reg. No. 3,050,204 filed January 3, 2005; registered January 24, 2006).
2. Complainant also has common law trademark rights to the SITTERCITY and SITTERCITY.COM marks.
3. Complainant operates an online database to connect families with local caregivers, such as babysitters, nannies, and tutors, and provides information on caregivers, including background checks, references, and experience.
4. Complainant has used the SITTERCITY and SITTERCITY.COM marks in its business since 2000 and operates across the nation, holding corporate contracts with the Department of Defense, MasterCard, Northwestern University, and UnitedHealth Group, among others.
5. Respondent registered the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names no later than May 2, 2005.
6. Respondent uses the <sitercity.com> and <wwwsittercity.com> domain names not in a manner demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use.
7. Respondent’s <siittercity.com> domain name resolves to a website that phishes for website visitors’ personal information and provides links to services and products offered by Complainant, as well as links to Complainant’s competitors.
8. The disputed domain names are confusingly similar to Complainant’s marks.
9. Respondent is not affiliated with Complainant’s business in any way and does not have Complainant’s permission to use the SITTERCITY or SITTERCITY.COM marks in any way. Respondent is not commonly known by any of the disputed domain names. Respondent makes a profit from its use of the disputed domain names. Respondent has engaged in typosquatting by registering domain names that are intentional misspellings of Complainant’s mark.
10. Respondent has no rights or legitimate interests in the disputed domain names.
11. The disputed domain names were registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a well-established and successful United States company that operates an online database to connect families with local caregivers, such as babysitters, nannies, and tutors, and provides information on caregivers, including background checks, references, and experience.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SITTERCITY mark (e.g., Reg. No. 3,029,158 filed January 3, 2005; registered December 13, 2005) and its SITTERCITY.COM mark (Reg. No. 3,050,204 filed January 3, 2005; registered January 24, 2006).
3. Complainant also has common law trademark rights to the SITTERCITY and SITTERCITY.COM marks.
4. Respondent registered the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names no later than May 2, 2005.
5. Respondent uses the <sitercity.com> and <wwwsittercity.com> domain names not in a manner demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use.
6. Respondent’s <siittercity.com> domain name resolves to a website that phishes for website visitors’ personal information and provides links to services and products offered by Complainant, as well as links to Complainant’s competitors.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it owns trademark registrations with the USPTO for its SITTERCITY mark (e.g., Reg. No. 3,029,158 filed January 3, 2005; registered December 13, 2005) and its SITTERCITY.COM mark (Reg. No. 3,050,204 filed January 3, 2005; registered January 24, 2006). The panels in Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), and Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) found that registration with the USPTO satisfies Policy ¶ 4(a) (i) in establishing rights in a mark. In Morgans Hotel Groupv. Nicholas, FA 1066665 (Nat. Arb. Forum Oct. 15, 2007), the panel found that rights in a mark date back to the filing date of the complainant’s application for registration with the USPTO. The Panel therefore concludes that Complainant’s trademark registrations with the USPTO demonstrate Complainant’s rights in the SITTERCITY and SITTERCITY.COM marks under Policy ¶ 4(a)(i), dating back to January 3, 2005. The Panel also finds that, on the evidence and the submissions of Complainant, Complainant has established that it has common law trademark to the SITTERCITY and SITTERCITY.COM marks and that those rights date from the year 2000.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s SITTERCITY mark. Complainant alleges that the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names are confusingly similar to its SITTERCITY mark. Complainant argues that each of the disputed domain names adds or removes one character, contains an incorrect character, or juxtaposes characters in the mark. Complainant argues that the determination of confusing similarity is to be made only between the “second-level” portion of the disputed domain names and the mark. The Panel notes that the <sitercity.com> domain name removes the letter “t” from the mark; the <siittercity.com> domain name adds the letter “i” to the mark; and the <wwwsittercity.com> domain name includes the letters “www.” The Panel further notes the generic top-level domain (“gTLD”) “.com” is added to each of the disputed domain names. The Panel therefore finds that the additional letters, as well as the addition of a gTLD, do not significantly alter the disputed domain names from the mark and that each of the disputed domain names is thus confusingly similar to Complainant’s SITTERCITY mark for the purposes of Policy ¶ 4(a) (i). See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); 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 the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant also alleges that the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names are confusingly similar to its SITTERCITY.COM mark. Complainant contends that the disputed domain names all contain either the addition or removal of one character, an incorrect character, or a juxtaposed character. The Panel observes that all three disputed domain names use the SITTERCITY.COM mark and that the <sitercity.com> domain name removes the letter “t” from the mark; the <siittercity.com> domain name includes an extra letter “i”; and the <wwwsittercity.com> domain name includes the letters “www.” The panel in Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001), concluded that the disputed domain name, which removed just one letter from the complainant’s mark, was confusingly similar to the mark. In Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002), the panel held that the <wwwdana.com> domain name was confusingly similar to the complainant’s mark because the mark itself was the dominant feature. The Panel therefore finds that the changes made to the disputed domain names do not change their confusing similarity to Complainant’s SITTERCITY.COM mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SITTERCITY trademark and to use it in its domain names , making only minor spelling changes and thus enhancing the confusing similarity between the domain names and the trademark;
(b) Respondent has then decided to use the <sitercity.com> and <wwwsittercity.com> domain names not in a manner demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use.
(c) Respondent has also decided to use the <siittercity.com> domain name so that it resolves to a website that phishes for website visitors’ personal information and provides links to services and products offered by Complainant, as well as links to Complainant’s competitors;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant also submits that Respondent is not commonly known by any of the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names. Complainant alleges that the WHOIS information indicates that the Respondent is known as an entity other than Complainant’s mark and provides evidence that the WHOIS information identifies “PrivacyProtect.org Domain Admin” as the registrant. See Exhibit I. Complainant further claims that it has not given Respondent permission to use the SITTERCITY or SITTERCITY.COM marks in a domain name. The panel in United Way of Am. v. Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007), held that because the complainant did not authorize the respondent to use its mark and the WHOIS information identified the respondent as “Alex Zingaus,” the respondent was not commonly known by the <unitedwayoprffp.org> domain name. In RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001), the panel stated that Policy ¶ 4(c)(ii) requires the respondent to show that it is commonly known by the domain name prior to registering the domain name, in order to prevail. The Panel finds that, because of the name identified on the WHOIS information and the lack of authorization from Complainant, Respondent is not commonly known by any of the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names pursuant to Policy ¶ 4(c)(ii).
(f) Complainant argues that Respondent uses the <sitercity.com> and <wwwsittercity.com> domain names not in a manner demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant submits evidence that the <sitercity.com> and <wwwsittercity.com> domain names resolve to respective websites that display links to third-party websites that compete with Complainant’s business. See Exhibit H. The Panel finds that, by featuring hyperlinks to Complainant’s own business, as well as businesses in competition with Complainant, Respondent is not using the <sitercity.com> and <wwwsittercity.com> domain names to make 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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)).
(g) Complainant also contends that Respondent uses the <siittercity.com> domain name to “phish” for personal information from visitors to its resolving website by displaying a text box declaring the visitor to be a “winner” and requesting personal information in order for the visitor to collect the prize. See Exhibit H. Complainant argues that using the disputed domain name to gather personal information from “unsuspecting Internet users” does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that using a domain name to acquire personal information of Internet users fraudulently is not 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 Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent uses the <sitercity.com> and <wwwsittercity.com> domain names to generate revenue through use of “click-through” hyperlinks, which Complainant claims amounts to bad faith registration and use. Complainant contends that Respondent achieves a “wrongful competitive advantage and commercial gain” by using the <sitercity.com> and <wwwsittercity.com> domain names to provide competing hyperlinks. The Panel determines that Respondent’s registration of confusingly similar domain names to attract Internet traffic to its website, by creating Internet user confusion as to Complainant’s affiliation to the domain names in order to capitalize from the “click-through” revenue generated, demonstrates bad faith registration and use of the disputed domain names under Policy ¶ 4(b) (iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Secondly, in regard to the <siittercity.com> domain name , the Panel has already noted that certain circumstances beyond those enumerated in Policy ¶ 4(b) may be evidence of bad faith registration and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Complainant argues that Respondent engaged in bad faith registration and use of the <siittercity.com> domain name by redirecting visitors to the website to a page that displays a pop-up window proclaiming the visitor a “winner” and offering a prize in exchange for personal details. Complainant alleges that Respondent’s use of the disputed domain name qualifies as “phishing,” which Complainant argues is evidence of bad faith registration and use. The panel in Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006), stated that the respondent demonstrated bad faith registration and use when it attempted to gather personal and financial information of website visitors by using a confusingly similar domain name. The panel in Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006), held that by using a domain name in order to fraudulently acquire personal and financial information from the complainant’s customers, the respondent registered and used the domain name in bad faith. The Panel concludes that Respondent’s use of the <siittercity.com> domain name to gain personal information from its website visitors reveals bad faith registration and use pursuant to Policy ¶ 4(a) (iii).
Thirdly, Complainant alleges that Respondent’s typosquatting behavior is evidence of bad faith registration and use because the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names are misspelled versions of Complainant’s SITTERCITY and SITTERCITY.COM marks. Complainant claims the resolving websites display the Complainant’s mark spelled correctly, which Complainant contends is evidence that Respondent designed the misspelled domain names to capitalize on Complainant’s marks inappropriately. Complainant argues that Respondent’s registration and use of the disputed domain names to capitalize on the reputation of Complainant’s mark by intentionally misspelling the mark in the domain names serves as evidence of bad faith. The Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a) (iii) because it capitalizes on Internet users who misspell Complainant’s mark. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a) (iii).”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SITTERCITY mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sitercity.com>, <siittercity.com>, and <wwwsittercity.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 12, 2012
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