Tapjoy, Inc. v. Dennis, Andrew
Claim Number: FA1207001455215
Complainant is Tapjoy, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Dennis, Andrew (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtapjoy.com>, registered with Network Solutions, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2012; the National Arbitration Forum received payment on July 27, 2012.
On July 26, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwtapjoy.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 July 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@wwwtapjoy.com. Also on July 30, 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 August 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant owns trademark registrations for the TAPJOY mark with the United States Patent and Trademark Office (“USPTO”), Japan’s Patent Office (“JPO”), and the European Union’s Office of Harmonization for the Internal Market (“OHIM”):
i. USPTO (Reg. No. 4,118,236 registered March 27, 2012);
ii. JPO (Reg. No. 5,494,122 registered May 18, 2012);
iii. OHIM (Reg. No. 10,383,388 registered April 10, 2012).
b. Respondent registered the <wwwtapjoy.com> domain name on May 12, 2012.
c. Complainant is a monetization and distribution services provider, including mobile advertising and monetization software platform services.
d. Complainant offers these services under the TAPJOY mark.
e. Respondent’s <wwwtapjoy.com> domain name is confusingly similar to Complainant’s TAPJOY mark.
f. Respondent is not commonly known by the <wwwtapjoy.com> domain name.
g. Respondent does not own trademark or intellectual property rights in the <wwwtapjoy.com> domain name and is not licensed or authorized to use Complainant’s TAPJOY mark.
h. Respondent’s <wwwtapjoy.com> domain name resolves to a generic search engine website that features third-party advertising hyperlinks for Complainant’s competitors in the technology and software industries.
i. Respondent attempts to attract Internet users by creating a likelihood of confusion with Complainant’s TAPJOY mark for commercial gain.
j. Respondent’s typosquatting is evidence of bad faith registration and use.
k. Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its TAPJOY mark.
2. Respondent’s <wwwtapjoy.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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.”).
Complainant claims that it offers mobile advertising and monetization platform services as a part of Complainant’s provision of monetization and distribution services. Complainant alleges that all of its services are offered under the TAPJOY mark. According to Complainant, Complainant owns trademark registrations for the TAPJOY mark with the USPTO (Reg. No. 4,118,236 registered March 27, 2012), the JPO (Reg. No. 5,494,122 registered May 18, 2012), and OHIM (Reg. No. 10,383,388 registered April 10, 2012). Past panels have found that trademark registrations throughout the world sufficiently demonstrate a complainant’s rights in a mark for the purpose of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Thus, the Panel holds that Complainant owns rights in the TAPJOY mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wwwtapjoy.com> domain name is confusingly similar to Complainant’s TAPJOY mark. Complainant argues that the only change Respondent makes to Complainant’s mark is the addition of the letters “www” in order to take advantage of Internet users that mistakenly fail to type the period separating the “www” prefix and the mark in the disputed domain name. The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” Previous panels have found that neither of these changes is sufficient to remove a disputed domain name from the realm of confusing similarity. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); 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.”). Consequently, the Panel holds that Respondent’s <wwwtapjoy.com> domain name is confusingly similar to Complainant’s TAPJOY mark pursuant to Policy ¶ 4(a)(i).
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 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.”).
Complainant alleges that Respondent is not commonly known by the <wwwtapjoy.com> domain name. Complainant contends that Respondent does not own trademark or intellectual property rights in the <wwwtapjoy.com> domain name and is not licensed or authorized to use Complainant’s TAPJOY mark. The Panel notes that the WHOIS information identifies “Dennis, Andrew” as the registrant of the disputed domain name. Prior panels have maintained that a respondent is not commonly known by a domain name if the complainant did not authorize the respondent’s use of the complainant’s mark and the WHOIS information differed from the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). In light of this precedent and the evidence in the record, the Panel finds that Respondent is not commonly known by the <wwwtapjoy.com> domain name according to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <wwwtapjoy.com> domain name resolves to a generic search engine website that features third-party advertising hyperlinks. Complainant claims that the hyperlinks resolve to the websites of Complainant’s competitors in the technology and software industries. Past panels have held that the hosting of competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). Based on the facts of the case, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <wwwtapjoy.com> domain name.
Complainant argues that Respondent attempts to attract Internet users by creating a likelihood of confusion with Complainant’s TAPJOY mark for commercial gain. Complainant notes that the confusingly similar nature of the <wwwtapjoy.com> domain name creates confusion as to Complainant’s affiliation with the disputed domain name. Complainant contends that Respondent commercially benefits by receiving pay-per-click fees. In similar situations, previous panels have found bad faith registration and use. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel concludes that Respondent registered and uses the <wwwtapjoy.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent’s <wwwtapjoy.com> domain name is evidence of typosquatting and is evidence of bad faith registration and use. Complainant argues that Respondent attempts to take advantage of Internet users’ typing mistakes. Past panels have held that evidence of typosquatting is evidence of bad faith registration and use. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”). The Panel agrees. The Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the mark based on the confusingly similar nature of the disputed domain name and the competing hyperlinks found on the resolving website. Prior panels have found that actual knowledge is evidence of bad faith registration. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Consequently, the Panel concludes that Respondent registered the <wwwtapjoy.com> domain name in bad faith according to Policy ¶ 4(a)(iii). The Panel finds that Respondent had actual knowledge of Complainant and its rights in the mark at the time of the domain name’s registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtapjoy.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 6, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page