Complainant is InfoSpace, Inc. (“Complainant”), represented by Leslie C. Ruiter, of Stokes Lawrence, P.S., 800 Fifth Avenue, Suite 4000, Seattle, WA 98104-3179. Respondent is TE Ventures, LLC and Elizabeth Chesen (“Respondent”), represented by Renee S. Kraft, of Fredrikson & Byron, P.A., 200 South Sixth Street, Suite 4000, Minneapolis, MN 55402.
The domain name at issue is <whatsnearby.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2006.
On February 7, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <whatsnearby.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 2006 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@whatsnearby.com by e-mail.
A timely Response was received and determined to be complete on March 6, 2006.
A timely Additional Submission from Complainant was received and determined to be complete on March 10, 2006. A timely Additional Submission from Respondent was received and determined to be complete on March 15, 2006.
On March 16, 2006,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David A. Einhorn as
Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent claims that their rights clearly predate that of Complainant, but nowhere have they proven the date on which either Respondent first owned the domain name at issue. Respondent only points to the domain name registration owned by Superstar Computing starting January 21, 1997, and ending sometime after November 22, 1998. Superstar Computing is not a Respondent herein. Respondent’s own documents show that all of Respondent’s claims about prior rights and “nine years ownership,” etc. are false. Respondent has not disputed Complainant’s November 9, 1998 first use date for the WHAT’S NEARBY trademark. Superstar Computing was still the owner of the domain name on and after November 22, 1998. Thus, Respondent has proven by their own documents that they did not own or use the domain name at issue prior to Complainant’s first use of the trademark.
As a preliminary issue, Respondent claims that its rights in the <whatsnearby.com> domain name predate Complainant’s first use date (November 9, 1998) of its trademark registration for WHAT’S NEARBY. This Panel finds that Respondent has not submitted evidence establishing the accuracy of this contention.
Respondent provides evidence of a domain registration on January 27, 1957 for <whatsnearby.com> owned by Superstar Computing (“Superstar”). This registration was for a one year period. No documents have been submitted by Respondent establishing that Superstar ever paid a renewal fee for this domain registration. Neither has Respondent provided any assignment documents showing transfer of rights from Superstar to Respondent. Respondent then provides evidence of registration of a domain name with Register.com from March 7, 2001 to March 7, 2002 and a domain name registration with Enom, Inc. from June 2, 2002 to present.
In its additional submission, Respondent argues that an agreement existed that Ms. Chesen would own the domain name registration for use by Superstar. However, no such agreement is attached to Respondent’s papers. Further, Respondent argues that she owns the registration because she had a 45% ownership interest in Superstar. The Panel finds that Ms. Chesen’s 45% ownership in Superstar does not translate, without a document of assignment, to an entitlement for Ms. Chesen to own the rights Superstar previously held to the domain name. The Supplemental Affidavit of Elizabeth Chesen attached to Respondent’s Additional Submission indicates that Ronald Mirth also owned a 45% interest in Superstar. Nowhere does Respondent explain why Superstar’s rights should be deemed to have transferred to Ms. Chesen, rather than to Mr. Mirth.
For these reasons, the Panel finds that Respondent’s rights to the domain name <whatsnearby.com> do not predate the trademark rights of Complainant.
Nevertheless, as explained below, the Panel does not find that Respondent’s use and registration of the <whatsnearby.com> domain has been in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Identical and/or Confusingly Similar
This Panel agrees with Complainant that Respondent’s <whatsnearby.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire WHAT’S NEARBY mark but omits the apostrophe and adds the generic top-level domain (“gTLD”) “.com.” Neither an omitted apostrophe, which is not a recognized character in domain names, nor the inclusion of a gTLD is sufficient to preclude a finding that Respondent’s domain name is identical to Complainant’s mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Thus, Complainant has satisfied the requirement of
paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
There is nothing in the record that demonstrates that Respondent is commonly known by or operates a business under the disputed WHATSNEARBY name. See Warner Bros. Entm’t, Inc. v. Schwartz, FA 608636 (Nat. Arb. Forum Jan. 26, 2006) (finding that the respondent does not have legitimate rights in a domain name when it is not known by that mark).
Thus, Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which “shall be evidence of registration and use of a domain name in bad faith”:
“(i) circumstances indicating that you have registered or have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The first example above is inapplicable, because there is no evidence that Respondent registered or acquired this specific Domain Name primarily for the purpose of selling it to Complainant or a competitor. Complainant has produced no evidence of any offer by Respondent to sell this specific Domain Name to anyone. Similarly, the second example above is inapposite, because the evidence is insufficient to show that Respondent’s registration or use of the Domain Name was intended to prevent Complainant from utilizing its mark in a domain name. The third example does not apply because Respondent has not been shown to be a competitor of Complainant and there is no evidence that Respondent registered the Domain Name for the purpose of disrupting Complainant’s business.
Neither is there any evidence establishing, under the fourth example, that Respondent intentionally attempted to attract, for commercial gain, Internet users to its Web site or the Web sites of others, by creating a likelihood of confusion with Complainant’s mark as to the source of sponsorship of the Web site or services offered by Respondent’s Web site. On the contrary, Complainant’s registered trademark is for providing a database featuring news and information of interest to specific geographical locations, whereas Respondent states that its intention has always been to use the Web site for its unrelated real estate business. Such dissimilar usages would not be likely to create consumer confusion pursuant to Policy ¶ 4(b)(iv).
Further, Complainant has failed to provide any other evidence based on which the Panel could find bad faith registration and use. See Loris Azzaro BV, SARL v. Asteri, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.”).
Reverse Domain Name Hijacking
This Panel denies Respondent’s request for a finding of reverse domain name hijacking in light of its finding that Respondent’s rights to the domain name <whatsnearby.com> do not predate the trademark rights of Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David A. Einhorn, Panelist
Dated: March 30, 2006
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