InfoSpace, Inc. v. NWEnterprise, Inc.
a/k/a Steve, K.
Claim
Number: FA0406000282129
Complainant is InfoSpace, Inc. (“Complainant”), represented
by Leslie C. Ruiter, of Stokes Lawrence, P.S.,
800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179. Respondent is NWEnterprise,
Inc. a/k/a Steve, K. (“Respondent”), 7 rue de Mont
Blanc, Geneva CH-1201 Switzerland.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwdogpile.org> and <dogpilecom.net>,
registered with Iholdings.com, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 28, 2004; the Forum received a hard copy of the Complaint
on June 1, 2004.
On
June 8, 2004, Iholdings.com, Inc. confirmed by e-mail to the Forum that the
domain names <wwwdogpile.org> and <dogpilecom.net>
are registered with Iholdings.com, Inc. and that Respondent is the current
registrant of the names. Iholdings.com,
Inc. has verified that Respondent is bound by the Iholdings.com, Inc. 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
June 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 28, 2004 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@wwwdogpile.org
and postmaster@dogpilecom.net by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
July 7, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 makes the following assertions:
1. Respondent’s <wwwdogpile.org>
and <dogpilecom.net> domain names are confusingly similar to
Complainant’s DOGPILE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwdogpile.org> and <dogpilecom.net>
domain names.
3. Respondent registered and used the <wwwdogpile.org>
and <dogpilecom.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
InfoSpace, Inc., is a global provider of wireless and Internet software and
application services to the leading wireless and broadband providers, websites
and merchant resellers around the world.
Complainant,
through its wholly owned subsidiary, Go2Net, Inc., holds numerous registrations
for the DOGPILE mark with the United States Patent and Trademark Office (Reg.
No. 2,456,655 issued June 5, 2001 and Reg. No. 2,401,276 issued November 7,
2000).
Complainant
began using the DOGPILE mark in 1996 in connection with computer programs and
telecommunications programs, including Internet search services, in the United
States and worldwide. Complainant, for
fiscal year end 2003, generated $9.9 million in net income on revenues of $46.9
million.
Complainant
operates its main websites at the <dogpile.com> and <dogpile.net>
domain names.
Respondent
registered the <wwwdogpile.org> and <dogpilecom.net>
domain names on March 30, 2004.
Respondent is using the domain names in connection with competing web
searching or indexing services featuring pop-up advertisements that link to
pornographic and adult websites.
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.
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
established that it has rights in the DOGPILE mark through registration with
the United States Patent and Trademark Office and through continued use of its
mark in commerce since 1996. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some
jurisdiction.).
The disputed
domain names are confusingly similar to Complainant’s DOGPILE mark because the
domain names incorporate the Complainant’s mark in its entirety and simply add
the prefix, “www” or the suffix “com.”
The mere additions of a “www” prefix or a “com” suffix to a registered
mark do not negate the confusing similarity of Respondent’s domain names pursuant
to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA
95092 (Nat. Arb.
Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Dana Corp. v. $$$
This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks).
Therefore,
Complainant has established that the <wwwdogpile.org> and <dogpilecom.net>
domain names are confusingly similar to Complainant’s DOGPILE mark pursuant
to Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in the disputed
domain names which contain in their entirety Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain names. In fact, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have such rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences in the Complaint as true.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); 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.”).
Respondent is
using the <wwwdogpile.org> and <dogpilecom.net> domain
names in connection with competing web searching or indexing services featuring
pop-up advertisements that link to pornographic and adult websites. Respondent’s use of domain names that are
confusingly similar to Complainant’s DOGPILE mark to divert Internet users to a
website unrelated to that mark does not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) ("[U]se of complainant’s entire mark in infringing
domain names makes it difficult to infer a legitimate use."); see also
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (holding that Respondent’s use of
confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements was not a bona fide
offering of goods or services); see also Geoffrey, Inc. v. Toyrus.com,
FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that Respondent had no rights
or legitimate interests in a domain name that it used to redirect Internet
users to an Internet directory website that featured numerous pop-up
advertisements for commercial goods and sexually explicit websites).
Furthermore,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <wwwdogpile.org> and <dogpilecom.net>
domain names. Thus, Respondent has
not established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Therefore, Complainant has established Policy ¶ 4(a)(ii).
Respondent is
using the disputed domain names to provide web searching or indexing services
featuring pop-up advertisements that link to pornographic and adult
websites. Complainant’s business also
provides search and directory services.
The Panel finds that, by creating confusion around Complainant’s mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to
offer goods and services similar to Complainant’s goods and services is
evidence of bad faith registration and use of the domain names pursuant to
Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Additionally, Respondent’s
disputed domain names cause Internet users to mistakenly believe that the
domain names are affiliated with Complainant.
Thus, the Panel determines that the initial user confusion that the
domain names cause is evidence that Respondent registered and used the domain
names in bad faith. See Sony Kabushiki Kaisha v. Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding bad faith registration and use where it is
“inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names).
Furthermore,
Respondent registered domain names that contain in their entirety Complainant’s
well-known mark and did so for Respondent’s commercial gain. Respondent’s domain names divert Internet
users seeking Complainant’s services to Respondent’s commercial website through
the use of domain names that are confusingly similar to Complainant’s
mark. Additionally, Respondent is
unfairly and opportunistically benefiting from the goodwill associated with
Complainant’s DOGPILE mark.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons
Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed
domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)
through Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using Complainant’s famous marks and likeness); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the
diversion of the domain name to a pornographic site is itself certainly
consistent with the finding that the Domain Name was registered and is being
used in bad faith.”).
Additionally,
Respondent intentionally registered a domain name, <wwwdogpile.net>,
that contains in its entirety Complainant’s DOGPILE mark. Respondent has engaged in the practice of
typosquatting. Typosquatting, itself,
is evidence of bad faith registration and use under the Policy. SeeCanadian Tire Corp., Ltd. v. domain
adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (holding that “[t] absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com>
domain name is] likely to confuse Internet users, encourage them to access
Respondent’s site” and evidenced bad faith registration and use of the domain
name); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
the <wwwdewalt.com> domain name was registered to “ensnare those
individuals who forget to type the period after the “www” portion of [a]
web-address,” evidence that the domain name was registered and used in bad
faith).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwdogpile.org> and <dogpilecom.net>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 21, 2004
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