national arbitration forum

DECISION

MySpace, Inc. v. Myspace Bot

Claim Number: FA0604000672161

PARTIES

Complainant is MySpace, Inc. (“Complainant”), represented by Ian Ballon, of Greenberg Traurig, LLP, 2450 Colorado Ave., Suite 400 East, Santa Monica, CA 90404. Respondent is Myspace Bot (“Respondent”), represented by Devin Smith, 2298 15th St, San Francisco, CA 94114.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myspacebot.com>, registered with Go Daddy Software, Inc.

PANEL

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.

Honorable Richard B. Wickersham, Judge, (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 7, 2006.

On April 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <myspacebot.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 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@myspacebot.com by e-mail.

A timely Additional Submission from Complainant was received on May 2, 2006 and determined to be complete.

On May 5, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).

MySpace.com is the second most highly visited website on the Internet. By virtue of its operation of one of the most popular sites on the Internet, MySpace, Inc.’s MYSPACE mark is a famous mark, widely known throughout the world.

Complainant MySpace, Inc. is owner of the MYSPACE trademark and has obtained a federal trademark registration from the United States Patent and Trademark Office reflecting such ownership. Complainant also has filed applications for additional mark registrations and has no reason to believe that the United States Patent and Trademark Office will reject those registrations. These registrations and applications are for, among other things, Internet based dating and social networking services. Complainant’s website allows Internet users to create their own customized web pages, which are searchable by other Internet users. The website is currently utilized by Internet users for online dating and networking, advertising new products, particularly music and film, and countless other purposes, as users are free to post a wide range of topics on their personalized web pages on the site.

Complainant’s website, located at the <myspace.com> domain name, has been overwhelmingly successful Since its launch in mid-2003, MySpace.com has become the second most visited website in the world, attracting over an estimated 66 million users. See Marc Gunther, “News Corp. (hearts) MySpace,” CNNMoney.com, available at <money.cnn.com/2006/03/28technology/pluggedin_fortune> (March 29, 2006). It additionally adds approximately 250,000 users every single day and is quickly becoming an enormously popular place for advertisers, who want to reach its huge youth demographic. Id. As such, the MYSPACE name and mark and the <myspace.com> domain name and any and all variations thereof are incredibly valuable.

In the instant matter, the Infringing Domain Name is unquestionably confusingly similar to Complainant’s MYSPACE mark. In fact, the Infringing Domain Name contains the entirety of Complainant’s mark, and the addition of the term “bot” does nothing to eliminate the confusion that Respondent created by registering a domain name containing the entirety of the MYSPACE mark. See Hewlett-Packard Co. v. Posch Software, FA 95322 (NAF Sept. 12, 2000) (holding that the addition of the term “software” to the <hp-software.com> domain name did not alleviate the confusion respondent created by using the entirety of the HP mark). The Infringing Domain Name should be transferred to Complainant as its rightful registrant.

Respondent has no legitimate interests in maintaining the Infringing Domain Name. First, Complainant has not consented, licensed or authorized Respondent to register and maintain the infringing <myspacebot.com> domain name. Moreover, Respondent is not commonly known by the Infringing Domain Name. While the Infringing Domain Name was supposedly registered by “Myspace Bot,” the corresponding website is titled “FriendBot.” Likewise, the copyright notice on the website identifies only “FriendBot” name. Respondent is simply using the MYSPACE name and mark to trade off of the goodwill in the mark and to give online consumers the impression that Complainant endorses or approves of Respondent’s unlawful activities.

Further, there is no legitimate noncommercial or fair use occurring through Respondent’s use of the Infringing Domain Name. Respondent established a website at <myspacebot.com> for its sole profit. Respondent sells its goods on the website. Moreover, the goods Respondent sells on the <myspacebot.com> website are designed to run automated scripts on the MySpace.com users with unwanted, unsolicited email – also in violation of MySpace’s Terms & Conditions. This violates the terms of use to which every user of the MySpace.com site agrees to abide.

Respondent is extremely familiar with how MySpace.com operates. After all, it created software to infiltrate it. Given its knowledge, it is safe to assume that its agents, employees, officers and directors have visited and used MySpace.com. By using the MySpace.com site, Respondent agreed to be legally bound by MySpace.com’s Terms & Conditions, which expressly forbid the activities in which Respondent engages. MySpace.com’s Terms & conditions specifically prohibit users such as Respondent from using automated scripts to add friends. The Terms & Conditions further prohibit users from using the site for “the transmission of ‘junk mail,’ ‘chain letters,’ of unsolicited mass mailing, instant messaging, ‘spimming,’ or ‘spamming.’”

In violation of MySpace.com’s Terms & Conditions and its contractual obligations to MySpace.com, Respondent, an active user of the MySpace.com site, advertises that its software allows MySpace.com users to almost instantly gain millions of friends on MySpace [sic] . . . Most other products only add the friends. Ours messages them too!”

B. Respondent

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name. ICANN Rule 5(b)(i).

The domain name <myspacebot.com> domain name clearly identifies the current owner’s intentions and purposes. It less clearly identifies to MYSPACE’s intentions. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).

The use of the <myspacebot.com> domain name to sell software will be discontinued. Respondent wishes to use the domain in fair use to clearly distinguish between Respondent and the MYSPACE mark. Desire to keep the domain name ownership includes both, ability to display to the previous users that Respondent is no longer at the <myspacebot.com> domain name , and to keep in contact with previous users to answer future questions. Proposed website attached (annex 1).

Respondent was originally a non-profit service but others saw the potential and began to sell identical products at high prices on other websites. It was only natural to begin charging for the previously free services.

The initial reason for using the name “FriendBot” was to eliminate initial confusion between Complainant from the beginning. Respondent clearly states that they are not affiliated in any way with the MYSPACE mark to avoid confusion.

Respondent is only a distributor of the software contained within the website. Developments and advertising exist solely outside of the <myspace.com> domain name. Respondent does not use its own product to advertise at the <myspace.com> domain name.

Respondent’s Terms of Service explains how and where the software may be used. It specifically states not to use the software to violate third party (myspace.com) Terms of Service. Many of the products sold on the website do not violate the Terms of Service of Myspace.com. Respondent’s TOS in many ways attempt to protect MYSPACE as well as itself.

C. Additional Submissions

In its Response, Respondent states that the <myspace.com> domain name (the “Infringing Domain Name”) “clearly identifies the current owner’s intentions and purposes” but “less clearly identifies to MYSPACE’s intentions.” Respondent is correct; its registration of the <myspacebot.com> domain name does reveal its intentions – to infringe upon the famous MYSPACE trademark and website to offer software which runs automated scripts and clearly violates MySpace.com’s Terms & Conditions. Respondent is a cybersquatter, and the Infringing Domain Name will be transferred to Complainant (“MySpace”) as the owner of the MYSPACE trademark.

DISCUSSION

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.

FINDINGS

Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant argues that it has established rights in the MYSPACE mark by registering the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,911,041 issued December 14, 2004). The Panel finds that because Complainant registered the MYSPACE mark with the USPTO, Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

Complainant further alleges that Respondent’s <myspacebot.com> domain name is confusingly similar to its MYSPACE mark because it wholly incorporates the mark and merely adds the generic term “bot.” The Panel finds that the mere addition of a generic term to Complainant’s MYSPACE mark in the disputed domain name does not sufficiently distinguish Respondent’s <myspacebot.com> domain name from the mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

Rights or Legitimate Interests Policy ¶ 4(a)(ii).

The Panel notes 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).

Complainant alleges that despite the WHOIS information that identifies Respondent as “Myspace Bot,” Respondent is not commonly known by the <myspacebot.com> domain name. Complainant alleges that Respondent’s website at the disputed domain name identifies Respondent as “FriendBot,” and that all logos and copyright notices on the site refer to “FriendBot.” In addition, Complainant claims that all the products offered for sale on Respondent’s site are branded with the “FriendBot” mark instead of Complainant’s MYSPACE mark. The Panel agrees that Respondent is not commonly known by the disputed domain name, and finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).

Moreover, Complainant argues that Respondent is using the <myspacebot.com> domain name to operate a website selling software products that circumvent the security system for Complainant’s website at the <myspace.com> domain name and also subject Internet users to unsolicited e-mails and pop-up advertisements. Complainant claims that Respondent is a registered user of its MYSPACE website, and is therefore violating the site’s Terms and Conditions by running automated scripts on Complainant’s website and redirecting Internet users to a website for its own commercial gain. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users seeking Complainant’s website under the MYSPACE mark to its own website for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

Complainant asserts that Respondent is using the <myspacebot.com> domain name to operate a website selling software that circumvents the security system at Complainant’s MYSPACE website. Moreover, Complainant claims that Respondent has changed the content of the website in response to the filing of the Complaint. Complainant alleges that the website at the disputed domain name is now even more likely to cause consumer confusion because it offers a direct link to Complainant’s website. Respondent also added a disclaimer that was not present when the action was originally filed. The Panel finds that Respondent’s diversion of Internet users seeking Complainant’s website under the MYSPACE mark to its own website for commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv), because Respondent likely profits from redirecting consumers to its own website and is, therefore, taking advantage of the confusing similarity between Complainant’s MYSPACE mark and the <myspacebot.com> domain name. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Furthermore, the Panel finds that Respondent has registered and used the disputed domain name for the primary purpose of disrupting Complainant’s business under Policy ¶ 4(b)(iii), because Respondent’s website purports to offer software that interferes with the legitimate use of Complainant’s MYSPACE website by Internet users. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <myspacebot.com> domain name be TRANSFERRED from Respondent to Complainant.

__________________________________________________________________

Richard B. Wickersham, Judge, (Ret.), Panelist

Dated: May 19, 2006

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page

National Arbitration Forum