Sittercity Incorporated v. Domain Administrator
Claim Number: FA1206001450145
Complainant is Sittercity Incorporated (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator (“Respondent”), represented by Ravi Puri, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sittersity.com>, registered with Moniker Online Services LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2012; the National Arbitration Forum received payment on June 22, 2012.
On June 25, 2012, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <sittersity.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 June 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@sittersity.com. Also on June 29, 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.
A timely Response was received and determined to be complete on July 17, 2012.
Complainant’s Additional Submission was received on July 23, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s additional submission was received on July 30, 2012 and deemed complaint with Supplemental Rule 7.
On July 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds:
Sittercity is an online solution for connecting families with local caregivers, including babysitters, nannies, tutors, elder care providers, pet sitters, and housekeepers. With over 2 million members nationwide, Sittercity connects families with pre-screened caregivers by providing detailed profiles with photos, parent reviews, background checks, up-to-date availability, references and caregiving experience. As the Department of Defense’s solution of choice, military families in all four branches (Army, Marines, Navy and Air Force) have access to Sittercity funded through an exclusive Department of Defense contract. Many other leading employers provide Sittercity’s Corporate Program as an employee benefit including UnitedHealth Group, MasterCard, Northwestern University, Avon and Children’s Medical Center of Dallas.
The company was founded in 2001 in Boston, Massachusetts by Genevieve Thiers and is headquartered in Chicago, Illinois. Sittercity.com began when Thiers distributed 20,000 flyers to different universities in the Boston area, soliciting babysitters interested in work. She immediately found 600 babysitters and soon connected them with a steady stream of enthusiastic parents. The company discovered an unmet need and the system spread rapidly to cities around the country.
In 2005, Sittercity.com established its Corporate Program to allow businesses and other organizations to purchase Sittercity.com memberships for their employees as part of their corporate child care benefits. Sittercity.com developed the program on the premise that by connecting employees to quality, reliable caregivers, workers will be more productive because they will be less likely to miss work due to child care issues. This would also help to alleviate the stress and distraction associated with finding trusted care for loved ones. Business and organizations are encouraged to see this as an opportunity to gain a strong return on investment and are offered group rates as further incentive to offer membership to their employees.
Currently, Sittercity.com has over one million participating caregivers across the country, with participants in every city.
Sittercity.com has nearly 60,000 followers on its Facebook consumer facing page and nearly 75,000 followers on its Department of Defense page. Every month, over one million unique visitors visit sittercity.com, each of whom come back to the site on average 3.2 times. A majority of the visitors (90.1%) come from the United States region, although Sittercity operates in both Canada and the United Kingdom as well.
Given Complainant's success as an industry giant, Complainant has also received the following awards and recognitions:
- CEC Celebrates Region’s Entrepreneurial Achievements with 2010 Momentum Awards Dinner
- Sittercity.com Named in Inc. Magazine’s 500 Fastest-Growing Private Companies
- Sittercity Named Best Babysitter/Nanny-Referral Service by New York Magazine
- Sittercity news releases and articles:
o Sittercity Secures $22.6 Million in Financing Led by Baird Venture Partners
o Parents Pay Premium for Last Minute New Year’s Eve Sitters
o Family Circle - Preparing Your Teen To Babysit
o The Wall Street Journal - Babysitting on a Saturday Night
o Sun-Sentinel - Need a Sitter? Add $11.75 an hour to the cost of a night out
o Miami Herald Blog - How to Deal with a Childcare Emergency
Sittercity Incorporated owns SITTERCITY and SITTERCITY.COM Marks cited in Section 4(c) above for which it has obtained federal trademark registrations. None of these federal mark registrations have been abandoned, cancelled or revoked and have become incontestable through the filing of Section 8 and 15 affidavits with the USPTO.
Sittercity Incorporated owns the exclusive right to use the Marks in connection with referrals in the fields of child care, newborn care, elder care, petcare, and house monitoring and care.
The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.
By virtue of its federal trademark and/or service mark registrations as shown in Exhibit E, Complainant is the owner of the Complainant's Mark(s) including Complainant’s first use September 15, 2001 for the mark SITTERCITY. See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)").
When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. Chris Mc Cready, WIPO Case No. D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")
The Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s) because (it/they) differ(s) by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contain(s) either:
[i.] the addition of one extra character, or...
[ii.] the removal of one character, or...
[iii.] one character which is incorrect, or...
[iv.] two juxtaposed characters
as compared to Complainant's Mark(s).
The Disputed Domain Name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (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 the complainant's marks).
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:
Respondent has not been commonly known by the Disputed Domain Name(s). See Policy, ¶4(c)(ii). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202.
Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant's Mark in a domain name.
A "Cease and Desist" letter was sent to the Respondent on December 15, 2011. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue.”
Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.com.gt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Finally, Complainant notes that if the owner of the Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
The earliest date on which Respondent registered the Disputed Domain Name(s) was August 21, 2010, which is significantly after Complainant's first use in commerce, September 15, 2001 as specified in their relevant registration with the USPTO.
The earliest date on which Respondent registered the Disputed Domain Name(s) was August 21, 2010 which is significantly after Complainant's registration of their relevant Marks with the USPTO on December 13, 2005.
The earliest date on which Respondent registered the Disputed Domain Name(s) was
August 21, 2010, which is significantly after Complainant's registration of SITTERCITY.COM on May 6, 2000.
The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
To further stress the above, Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy ¶4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); 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). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy ¶4(b)(iv).
Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.
Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior.
Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy, 4(b)(ii) and Time Warner Inc. v. Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, NAF Claim No. FA0704000964679.
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. Rule 5(b)(i).
Under paragraph 4(a) of the Policy, a complainant has the burden of proving all of the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
As set forth herein below, Complainant has not and cannot establish any of the elements required under the Policy, and the Panel should render a decision in Respondent’s favor.
I. RESPONDENT BACKGROUND
As a preliminary matter, the Respondent has acquired numerous domain names in its portfolio that are generic and descriptive terms, geographically descriptive designations, surnames, and acronyms for future use. Due to the size of the portfolio, it is not feasible for Respondent to build out content for all of its domain names. Accordingly, pending such build out, the domain names are parked with a domain name parking service.
The parking services engage advertisers and searching services to provide keywords, hypertext content, sponsored links and search results ads (collectively “Sponsored Links”) on a domain name based on the generic / keyword terms within a domain name. When an end user types in a domain name in the address bar of their Internet browser, the end user lands on a website that provides Sponsored Links. These Sponsored Links are similar to the sponsored links that are found above, below, and in the right column of the search results an end user would receive if they were to type the word(s) contained in the domain name, excluding the gTLD (e.g. .COM), in a regular search engine (e.g. Google, Yahoo). With certain Internet browsers permitting end users to conduct a web search directly via the address bar (e.g. Google Chrome), to the extent an end user adds a gTLD to their search term(s), a park page provides the end user with the benefit of receiving relevant sponsored search results they would have received via their search provider. Each of these activities is conducted electronically without Respondent’s specific intent, knowledge or awareness with respect to any content displayed on a parked domain name.
While certain domain names are parked, Respondent focuses on the build out of certain domain names within certain niches. Respondent works with third parties to develop content for certain domain names, some of which are targeted towards the educational sector. For example, Respondent’s domain name CareersAndCollege.com provides relevant articles on education and allows end users to select a career, degree, and online or on campus option to search for programs that may be offered near their home or work. When Respondent has time to focus on the build out of the Domain Name, Sittersity.com, a website similar to CareersAndCollege.com is possible, with a focus on education options for care takers / sitters. Accordingly, the content directly relates to the combination of two generic keywords in the Domain Name: Sitter + University.
II. THE DOMAIN NAME IS NOT IDENTICAL OR CONFUSINGLY SIMILAR TO THE TRADEMARK IN WHICH THE COMPLAINANT HAS RIGHTS. RULE 3(B)(IX)(1); UDRP ¶4(A)(I).
[a] In response to allegations in Complaint paragraph 5[a] that the Domain Name is nearly identical and confusingly similar to Complainants Marks:
[i] Although the Domain Name and the Complainant’s Marks differ by only a single character, Respondent denies that they are confusingly similar. As noted in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (NAF June 14, 2006), “Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002). The omission of the letter “s” from the mark is one of those small differences that matters in this context.”
Similarly, in this case, the SitterCity mark is merely descriptive as it is composed of two generic terms that are used in a descriptive manner to suggest an end user could use the site to find a ‘sitter’ in their ‘city.’ Furthermore, Respondent notes that while surfing the Internet, it is easy for an end user to distinguish and see the small differences between: [1] the letters “s” and “c”; [2] “sity” and “city” attached to the word “Sitter”; and [3] Complainant’s Mark, which is comprised of two separate, descriptive words, Sitter + City, whereas the Domain Name is comprised of one fanciful word – Sittersity - that combines the words Sitter + University.
Therefore, the Domain Name and Complainants Marks are not identical or confusingly similar. Thus, Complainant has failed to establish this first element, and the Complaint should be dismissed.
III. RESPONDENT HAS A LEGITIMATE INTEREST IN RESPECT OF THE DOMAIN NAME THAT IS THE SUBJECT OF THE COMPLAINT. RULE 3(B)(IX)(2); UDRP ¶4(A)(II).
[a] In response to allegations in Complaint paragraph 5[b](vi) that Respondent is not using the Domain Name in a manner that would be considered legitimate fair use:
[i] “Complainant has the burden of proving that Respondent has no legitimate interest in the Domain Name, not of convincing the Panel that Complainant has more of an interest than Respondent in the Domain Name.” See Telephone and Data Systems, Inc. v. Protected Domain Services / Daniel Wang, D2011-0435 (WIPO); emphasis in original. As noted by the respondent in The Landmark Group v. Digimedia L.P., FA0406000285459 (NAF August 6, 2004), they registered “large numbers of dictionary words” and received revenue from pay-per-click advertising links, at least some of them related to the generic nature of the domain name. The panel in that case held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.”
In this case, Respondent denies that it has no rights or legitimate interests in respect of the Domain Name as it is able to show possible future development for the Domain Name that is similar to other domain names in the educational sector that Respondent owns (e.g. CareersAndCollege.com). Furthermore, the first sponsored link on the Domain Name relates to an educational institution, “MyEduSeek.com.” Accordingly, the Sponsored Links on the domain name are directly related to the dictionary keywords incorporated into the domain name: Sitter + University. Therefore, the current use of the Domain Name is permitted under the Policy.
[ii] Respondent must prevail if it has established a “potentially legitimate interest in the disputed domain name and Complainant has been unable to prove that such interest is illegitimate.” See Borges, S.A., Tanio, S.A.U. v. James English, D2007- 0477 (WIPO). As noted above, Respondent’s future build out of the Domain Name and the current Sponsored Links on the Domain Name are relevant to the generic dictionary keywords incorporated in the Domain Name. Therefore, Respondent is able to show a legitimate interest in the Domain Name and must prevail.
[iii] The facts in this case are very similar to those in CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (NAF May 3, 2010), where it was determined that the Respondent demonstrated a legitimate interest in the subject domain name by using it for a PPC parking page. The Panel in CNRV, Inc. v. Vertical Axis, Inc. explained that “although numerous panels have noted the lack of societal benefit offered by pay-per-click (PPC) landing pages of the type offered by Respondent, see, e.g., mVisible Techs., Inc. v. Navigation Catalyst Systs., Inc., D2007-1141 (WIPO Nov. 30, 2007), panels also have recognized that domain names that are descriptive and are used solely in connection with PPC advertising keyed to the descriptive meaning of the domain name can constitute a legitimate interest for purposes of the policy.” Id. Similarly, as shown by Complainant, the first Sponsored Link on the Domain Name relates to an educational institution, “MyEduSeek.com.” Accordingly, the Sponsored Links on the Domain Name have a direct relationship to the generic dictionary keywords incorporated into the Domain Name: Sitter + University.
As set forth above, Respondent’s business model for the Domain Name has been held to be a legitimate use under the Policy. Thus, Complainant has also failed to establish this second element, and the Complaint should be dismissed.
IV. THE DOMAIN NAME SITTERSITY.COM WAS NOT REGISTERED OR USED IN BAD FAITH. RULE 3(B)(IX)(3); UDRP ¶4(A)(III).
It is a well-settled majority view that a complainant under the Policy is required to prove both bad faith registration and bad faith use. For example, even if the evidence showed that a disputed domain name had been registered in good faith, but later put to a bad faith use, the requirements of paragraph 4(a)(iii) of the Policy would not have been met, and the complaint would fail. Alternatively, if the Complainant fails to meet its burden to show that the domain name was acquired in bad faith, the Complaint must fail even if the evidence shows bad faith use. See e.g. InnoGames GmbH v. Buydomains.com, Inventory Management, D2011-0085, (WIPO March 28, 2011); Guideline Instruments Ltd. v. Anthony Anderson D2006-0157 (WIPO Dec. 4, 2006) (citing ten cases supporting the proposition that domain must be actually registered in bad faith to qualify under P 4(a)(iii)s bad faith prong); A. Nattermann & Cie .GmbH and Sanofi-aventis v. Watsons Pharmaceuticals, Inc., WIPO Case No. D2010-0800, and the recent unanimous three-member panel decisions in Prime Pictures LLC v DigiMedia.com L.P., WIPO Case No. D2010-1877, Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, Quester Group, Inc. v. DI S.A., WIPO Case No. D2010-1950, and The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp, WIPO Case No. D2010-2180.
As set forth below, Complainant has failed to establish either the “registered in bad faith” or the “bad faith use” prong, and thus the Complaint should fail on this deficiency alone.
[a] In response to allegations in Complaint paragraph 5[b](iv) that Respondent never responded to the “Cease and Desist” letter sent on December 15, 2011:
[i] Respondent denies receipt of such letter in December 2011, which was sent to Respondent’s privacy service at that time, not to Respondent. Furthermore, Complainant fails to inform the Panel that a “Cease and Desist” letter for the Domain Name was sent directly to Respondent on March 26, 2012. Complainant also fails to inform the panel that: [i] Respondent replied to Complainant on the following day, March 27, 2012; [ii] that Complainant responded on March 28 & April 13, 2012; and [iii] the last correspondence between the parties was by Respondent on April 13, 2012. Accordingly, Respondent’s Exhibits show proof of Respondent’s correspondence as it relates to a “Cease and Desist” letter from Complainant. Therefore, Complainant’s allegations to show any bad faith on the part of Respondent are incomplete and misrepresent the facts.
[b] In response to allegations in Complaint paragraph 5[b](v) that Respondent ignored Complainant’s attempts to resolve the dispute outside of the administrative proceeding:
[i] As Respondent indicated above, the last correspondence between the parties was by Respondent on April 13, 2012. Accordingly, it was Complainant, not Respondent, who ignored further communication and attempts to resolve the dispute outside of the administrative proceeding. Therefore, Complainant’s allegations to try to show any bad faith on the part of Respondent are untrue and misrepresent the facts.
[c] In response to allegations in Complaint paragraphs 5[b](viii) and (x) that the earliest date on which Respondent registered the Domain Name was August 21, 2010, which is after Complainant’s registration of the domain name SitterCity.com on May 6, 2000 and Complainant’s alleged first use of their mark in commerce on September 15, 2001:
[i] The full Whois provided by the registrar, Moniker, shows that Respondent registered the domain on November 27, 2004. As Complainant used their registrar, Register.com, to provide the Whois information for their domain name, SitterCity.com, it is inexcusable for Complainant to have used the “my whois” option in DomainTools.com to exclude the relevant information from the “registration” tab for the Domain Name. The missing elements from the DomainTools.com “registration” tab clearly shows the creation date of the Domain Name to be November 27, 2004. The August 21, 2010 date referred to by the Complainant reflects a date the Registrar may have updated their database, however, that is almost six years after the date the domain was created and registered by Respondent. Accordingly, Complainant uses incomplete and inaccurate Whois information to rely upon for its Complaint, despite Respondent clarifying this exact point in its April 13, 2012 correspondence to Complainant. Therefore, Complainant’s allegations once again try to show bad faith on the part of Respondent but are once again untrue, incomplete and misrepresent the facts.
[ii] In order to prevail, Complainant must provide a reason why the bad faith intent and registration of the domain name were contemporaneous, as observed by the Panel in Intuit Inc. v. Nett Corp., D2005-1206 (WIPO):
“The earliest evidence that could possibly amount to bad faith use is so long after registration that it cannot outweigh the evidence tending to show good faith registration: Passion Group Inc. v. Usearch, Inc., eResolution Case AF-0250 [<jobpostings.com>], followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, [<animerica.com>]. See also Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085.
In the instant case, Respondent registered the Domain Name without any mal-intent on November 27, 2004. Complainant does not provide any evidence dated November 27, 2004, that Respondent registered the domain name in bad faith. The only evidence provided is a screen shot of a parked page which appears to have been printed in 2012 (although the date at the bottom is conspicuously missing). Thus, Complainant is unable to show any bad faith intent at the time Respondent registered the Domain Name. More importantly, there is absolutely no evidence that Respondent had actual knowledge of Complainant or its business when the Domain Name was registered; and there is no constructive notice since there was no Registered trademark or even a pending trademark for SitterCity at the time the Domain Name was registered.
[iii] As this Complaint was brought almost eight years after the registration of the Domain Name, which was registered prior to any filing and/or registration of a trademark by Complainant, Complainant’s registration of their domain name and date of first use in commerce of their mark that was unregistered at the time of Respondent’s registration of the Domain Name, is irrelevant. However, Respondent feels the need to address Complainant’s allegation of first use directly to show that it is equally insufficient to show any bad faith registration by Respondent.
To the extent Complainant had brought a timely filing of their Complaint in 2004, “[C]omplainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA0611000836538 (NAF December 28, 2006); citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Furthermore, “the less distinctive a mark (i.e., the more descriptive or generic are the word or words making up the mark), the greater the scrutiny required to sustain a complainant’s assertion of common law trademark rights.” See Id; citing One Creative Place, LLC v. Kevin Scott, D2006-0518 (WIPO June 16, 2006); Deutsche Post AG v. NJDomains, D2006-0001 (WIPO March 1, 2006); Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (NAF Feb. 15, 2002).
As SitterCity is composed of two generic terms that are used in a descriptive manner to suggest an end user could use the site to find a ‘sitter’ in their ‘city’, it is less distinctive and should require greater scrutiny. Regardless of that fact, Complainant fails to provide sufficient secondary meaning for the mark from its first use in commerce in 2001 through 2004 (when Respondent registered the Domain Name). Specifically, Complainant fails to provide any amount of sales, the nature and extent of advertising, and consumer surveys during the period of 2001 through 2004. Complainant merely provides some information on limited media coverage and one sentence toward the distribution of flyers in the Boston area (where Complainant started its business), which does not suggest any coverage in California, where Respondent is based. These facts alone are well below the threshold necessary to provide secondary meaning. Therefore, Complainant is unable to establish common law trademark rights for its unregistered trademarks between the years 2001 to 2004, has no showing of any bad faith by Respondent and should not be permitted to receive protection under the Policy.
[d] In response to allegations in Complaint paragraph 5[b](ix) that Respondent registered the Domain Name on August 21, 2010, after Complainant’s registration of their relevant marks with the USPTO on December 13, 2005:
[i] As noted above, the full Whois provided by the registrar shows that Respondent registered the domain on November 27, 2004, prior to Complainant’s filing AND registration of their trademark. In fact, a search on the USPTO website for the combined words “sitter” and “city” at the time of registration of the Domain Name would not have resulted in any records. Accordingly, Complainant uses incomplete and inaccurate Whois information to rely upon for its allegation, despite Respondent clarifying this exact point in its April 13, 2012 correspondence to Complainant. Furthermore, Complainant is unable to show that Respondent was aware of Complainant’s mark at the time of registration of the Domain Name. Therefore, Complainant’s allegation is untrue and misrepresents the facts and is unable to show any element of bad faith at the time of registration.
[e] In response to allegations in Complaint paragraph 5[c](i) that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith:
[i] As noted by this Panel in its recent decision in Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. PPA Media Services / Ryan G Foo, FA 1204001441330 (NAF June 25, 2012), “…“typosquatting” is not adequate grounds to transfer a domain name if the domain name at issue does not prevent Complainant from reflecting their mark in a domain name, and Complainant cannot show a violation of their trademark at the time of registration of the domain name.” Respondent denies any allegation of “typosquatting” and further refutes any element of bad faith as: [1] the Domain Name does not prevent Complainant from reflecting their mark in a domain name, as it relates to the Whois information for SitterCity.com which reflects Complainant’s mark - SitterCity; and [2] Complainant cannot show a violation of the Complainant mark at the time of registration of the Domain Name as the Domain Name was registered prior to the filing of the Complainant mark with the USPTO. Thus, this allegation does not support a finding of bad faith registration.
[f] In response to allegations in Complaint paragraphs 5[c](ii) and (v) that Respondent displayed content and/or keywords directly related to Complainant’s business on its Domain Name and advertised pay-per-click links to promote products that compete with Complainant, divert potential customers away from Complainant, and disrupt Complainant’s business:
[i] As set forth in the Complaint, the Complainant is in the business of offering “referrals in the fields of child care, newborn care, elder care, pet care, and house monitoring and care.” Respondent does not offer products or services even remotely similar. In fact, Respondent does not offer any products or services on the website. The Sponsored Links on the website are related to the Domain Name itself and consists of links to third party educational websites and/or care taker / sitter websites.
Accordingly, the pay-per-click links to educational websites are clearly not offering products or services that compete with Complainant’s marks. With respect to pay-per-click links to any websites related to the generic keyword “sitter,” as Complainant has not provided any evidence of trademark or other rights to exclusive use of the generic term “sitter,” these pay-per-click links do not compete with Complainant’s marks (as opposed to one particular keyword within the marks). Therefore, Respondent is not promoting products that compete with Complainant.
Thus, Respondent is not a competitor of Complainant and did not register the Domain Name for the purpose of competing with the business of a competitor.
[ii] As set forth in the Complaint, since 2005, Complainant alleges that it has established a Corporate Program, they have grown from 600 babysitters in 2001 to over one million caregivers currently, they have over one million unique visitors each month to their website, they have secured $22.6 Million in financing, and on June 26, 2012, the date of the Complaint, the Complainant had nearly 60,000 followers on Facebook (suggesting there was less than that amount). Furthermore, as of July 11, 2012, Complainant has now grown to over 60,000 followers, having a total of 60,221. As Respondent registered the Domain Name in 2004, prior to the filing and registration of Complainant’s marks, Respondent vehemently denies the diversion of potential customers away from Complainant and disruption of Complainant’s business as Complainant has been able to show exponential growth in that period of time, along with growth in just the last two weeks on its Facebook page. Accordingly, the Domain Name has had no impact on Complainant’s business.
Thus, based on the information provided by the Complainant themselves, there is no evidence of confusion or diversion of potential customers away from Complainant or any evidence of disruption of Complainant’s business.
[g] In response to allegations in Complaint paragraphs 5[c](iii) and (iv) that Respondent is using Complainant’s marks to achieve a wrongful competitive advantage and commercial gain by misleading Internet users:
[i] As set forth above, Respondent is not a competitor of Complainant and has no intention to attract for commercial gain, Internet users to its website 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 respondent’s website of a product or service on Respondent’s website. In fact, Complainant does not set forth any evidence that would suggest there was any likelihood of confusion of Complainant’s mark by an Internet user landing on Respondent’s website. Further, as discussed above, the Sponsored Links on the website are related to the generic keywords within the Domain Name itself and consist of links to third party educational websites and/or care taker / sitter websites. Therefore, Respondent is not promoting products that would provide a competitive advantage over Complainant nor mislead Internet users.
[h] In response to allegations in Complaint paragraphs 5[c](vi) and (vii) that Respondent is a serial cybersquatter:
[i] Respondent denies Complainant’s allegation that it is a serial cybersquatter. Furthermore, as the FORUM has indicated previously, whether or not a Respondent is a serial cybersquatter “is immaterial unless it prevents Complainant from using its mark in a domain name.” See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. PPA Media Services / Ryan G Foo, FA 1204001441330 (NAF June 25, 2012). As mentioned above, Complainant is NOT prevented from using its mark in a domain name, as evidenced by the Whois information which shows Complainant registered their mark in the domain name SitterCity.com on May 6, 2000. Thus, the allegation is immaterial and does not establish any bad faith on the part of Respondent.
[ii] Paragraph 4(b)(i) of the Policy provides that evidence of bad faith use on the part of the Respondent includes a transfer of a domain name to the complainant who is the owner of the trademark for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Complainant purportedly provided evidence of Respondent’s pattern of typo-squatting, which consists of three UDRP decisions against this Respondent. However, in each of those three instances there was no formal notice or request sent from the complainant to Respondent to resolve the dispute prior to the filing of a UDRP. Once Respondent was notified of the initiation of the UDRP dispute and evaluated the complainant’s allegations therein, Respondent promptly communicated with the complainants in each of the three disputes with an offer to transfer the domain name(s) at issue at no cost. Respondent did not ask for any reimbursement of its costs, much less any consideration in excess thereof. Accordingly, Respondent’s behavior would not be classified as bad faith under Paragraph 4(b)(i). Although the complainants appreciated the offer and would have accepted the offer had they communicated with Respondent prior to initiating a dispute, there was no incentive to withdraw the complaint as the UDRP filing fees were not fully refundable. Accordingly, Respondent simply did not file a formal response to those UDRP complaints and allowed a decision to be rendered by the Panel for the transfers.
In this case, however, the Domain Name is not identical and/or confusingly similar to Complainant’s mark, Respondent has a legitimate interest in respect of the domain name, and Respondent did not register and/or use the Domain Name in bad faith, especially since the Domain Name was registered prior to any filing and registration of Complainant’s mark. Accordingly, Respondent has chosen to respond to this particular UDRP to reserve its rights in the Domain Name.
Based on Respondent’s response above, as Complainant has failed to establish all three elements, the Complaint should be dismissed.
C. Additional Submissions
Complainant submitted a timely additional submission on July 23, 2012, which read:
“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that
was registered, or in which the complainant acquired unregistered rights, after
the disputed domain name was registered? The
consensus view is that the registration of a domain name before a complainant
acquires trademark rights in a name does not prevent a finding of identity or
confusing similarity. The UDRP makes no specific reference to the date of which
the owner of the trade or service mark acquired rights……”, see Madrid 2012,
S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598,
<2m12.com> inter alia; Esquire Innovations, Inc. v. Iscrub.com c/o
Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator,
WIPO Case No. D2007-0856, <iscrub.com>.
We
further stress, that the domain was acquired with the intent of selling the
domain in excess of out of pocket expenses. As shown in the Respondent’s email
dated April 13, 2012, the Respondent proposes a Settlement of over $14,000 as
indicated by the appraisal link provided in the email. In addition, as shown in
the historical screenshots, the Respondent has intent as shown by the domain
for sale link on the landing page. As shown in WIPO Decision D2001-1066,
Trip.com, Inc. v. Daniel Deamone, "A fourth factor is that Respondent
has offered the Domain Name for sale to the public. There is nothing inherently
wrongful in the offer or sale of domain names, without more, such as to justify
a finding of bad faith under the Policy. However, the fact that domain name
registrants may legitimately and in good faith sell domain names does not imply
a right in such registrants to sell domain names that are identical or
confusingly similar to trademarks or service marks of others without their
consent. Although Respondent's offer of the Disputed Domain Name(s) for sale
was not made specifically to Complainant or its competitor, offers for sale to
the public may nevertheless constitute evidence of bad faith under the
Policy." The offering for sale of a domain name, even to a third party,
supports bad faith. See Policy, Paragraph 4(b); Sporty's Farm L.L.C. v.
Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North
America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison &
Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000). See also WIPO
Case No. D2003-0689, Mr. Donning Eric v. Mr. Nyunhwa Jung,..."The
posting of the announcement: "This domain is for SALE!" constitutes
satisfactory evidence, when combined with the Respondent's lack of legitimate
rights to or interests in the domain name, that the Respondent's primary
purpose in registering the domain name was to sell it in contravention of the
Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO
Case No. D2000-0036).
Respondent submitted a timely additional submission on July 30, 2012, which read:
RESPONSE TO FACTUAL AND LEGAL ALLEGATIONS MADE IN COMPLAINANT’S ADDITIONAL SUBMISSION
I. COMPLAINANT’S ADDITIONAL SUBMISSION IS INSUFFICIENT AND SHOULD BE DISREGARDED
The Panel should disregard Complainant’s Additional Submission entirely and consider it an additional factor of their bad faith toward a finding of Reverse Domain Name Hijacking (“RDNH”).
As indicated in America Online, Inc. v. Thricovil, FA 638077 (NAF Mar. 22, 2006), Paragraph 12 of the Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties. As a general rule, a Panel should consider additional submissions only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission, or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated. See also Sina.com Online v. CyberTavern, LLC, FA 1235499 (NAF Jan. 13, 2009) (Sorkin dissenting). Furthermore, under FORUM Supp. Rule 7(f), additional submissions must not amend the Complaint or Response.
In this case, Complainant has not provided in its Additional Submission any newly discovered evidence that was not reasonably available prior to the filing of its Complaint. Complainant rebuts arguments that it reasonably should have anticipated in its Complaint. Furthermore, Complainant has actually attempted to amend its Complaint by trying to introduce evidence and arguments via its Additional Submission that it should have raised in its Complaint.
Accordingly, the Panel should not consider Complainant’s Additional Submission in this matter but should contemplate Complainant’s bad faith intent as it deliberates about RDNH.
II. COMPLAINANT’S AUTOMATED UDRP SYSTEM IS FLAWED AND TAKES ADVANTAGE OF THE UDRP PROCESS.
As announced on July 26, 2012 (a week after Respondent’s Response had been filed), Complainant’s representative has introduced a new product, HawkUDRP, which “collects relevant evidence, generates the necessary UDRP documentation and completes the entire process quickly and cost effectively. HawkUDRP can generate filing packages compliant with National Arbitration Forum (NAF) . . . HawkUDRP gives users access to the same automated processes and technology that CitizenHawk itself uses to pursue infringing domains.” Ironically, when addressing the Complainant’s representative in a recent case, this Panel has noted that Complainant’s representative has appeared in 365 reported cases and “[i]f Complainant has not alleged an essential element, there must be a reason.” See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. PPA Media Services / Ryan G Foo, FA 1204001441330 (NAF June 25, 2012).
Based on the announcement above and the numerous misrepresentations and lack of essential elements in the Complaint that Respondent has pointed out in its Response, it is reasonable to believe that the Complaint was drafted via an automated process. Accordingly, the lack of attention to details and compliance with the Rules is apparent in the Complaint and Complainant’s Additional Submission. As Respondent has employed attorneys and has expended time, effort and costs to respond to Complainant and as the Panel is required to review the Complaint and Response (although Respondent still asserts that the Panel disregard the Complainant’s Additional Submission) to come to an ultimate resolution and then draft a decision, it is reprehensible that Complainant would increase the work load of all parties involved by using an automated process to help draft sophisticated documents that require attention to detail, factual information, and ultimately compliance with the Rules. Furthermore, to the extent Complainant could assert that they do have a human element in their automated process to ensure factual information and compliance with the Rules, their behavior is even more egregious as it is not only a computer error but moreover human error that has resulted in their insufficient filings that misrepresent facts and do not satisfy all of the elements required in the Rules. Therefore, Respondent asserts that Complainant’s misrepresentations and lack of essential elements in its Complaint demonstrate a bad faith filing and a clear showing of RDNH.
III. COMPLAINANT CONTINUES TO MISREPRESENT FACTS AND ATTEMPTS TO MISLEAD THE PANEL
In Complainant’s Additional Submission Paragraph IV(a), once again Complainant misrepresents the facts and attempts to misguide the Panel. Complainant alleges that the Disputed Domain Name was created in 2007 by Texas IPA. Unfortunately, this allegation is clearly untrue. As shown in Respondent’s response, the registrar’s Whois information AND DomainTools.com both show a creation date of the Disputed Domain Name in 2004. Accordingly, this allegation is clearly false and goes beyond showing Complainant’s bad faith on their part as they clearly fail to show Respondent’s bad faith as the Disputed Domain Name was registered before the filing of their Marks. Therefore, rather than admit its mistake and error in filing this UDRP, Complainant resorts to invalid arguments and clearly false analysis to suggest that the Disputed Domain Name was not registered by Respondent in 2004. Thus, as a failed attempt to amend the facts and their Complaint, the Panel should disregard the Additional Submission, or at least this allegation.
In any case, to remove any and all doubt and provide additional proof to assist the Panel in finding RDNH:
[i] Respondent notes that Texas IPA is a private whois service utilized by Respondent’s former registrar, Compana. The private whois service, Texas IPA, appears to have been created on or around 2007, as noted by updated Whois information for the Disputed Domain Name provided in Complainant’s complaint and the last search result via UDRPSearch.com in Respondent’s response showing the first UDRP against Texas IPA decided in March 2007. Furthermore, as shown in Respondent’s response, when using UDRPSearch.com to search for the exact phrase of “Texas International Property Associates” for “Respondents,” the result is 326 cases. When conducting a second search of the “Full Text” of decisions for the phrase “Compana Texas International Property Associates”, you have the same result of 326 cases. Accordingly, as Compana’s private whois service, Texas IPA was not the registrant of Respondent’s domain names nor was it the original registrant of the Disputed Domain Name.
[ii] Compana is no longer an ICANN Accredited Registrar as it was terminated. Accordingly, there is no information that Respondent could obtain directly from the former registrar to show a receipt for registration of the domain in 2004. Even if Compana were in existence, given that it has been over 7 years since the initial registration of the Disputed Domain Name, it is unlikely that they would still retain any such receipt and/or information. However, in addition to Respondent’s assertion that it was the original registrant, Respondent is able to show the same nameservers RENTALQUEUE.COM were utilized for the Disputed Domain Name at the time of its original creation date as were used for domain names that were the subject of UDRP disputes against Respondent. Specifically, Respondent’s response provides evidence from HosterStats.com that clearly shows the same initial nameservers of RENTALQUEUE.COM were utilized for the domain names pioneerhybrid.com and eastmanchemicals.com. See Pioneer Hi-Bred Int’l, Inc. v. Manila Indus., Inc., FA 444468 (NAF May 7, 2005) and Eastman Chem. Co. v. Manila Indus., Inc., FA 450806 (NAF May 6, 2005). Accordingly, Respondent asserts that despite its use of the private whois services offered by its registrars due to the size of its portfolio and its desire to reduce unsolicited communication (but in no way avoid legitimate communication), Respondent was the original registrant for the Disputed Domain Name, is still the registrant for the Disputed Domain Name, and has continuously been the registrant for the Disputed Domain Name for the entire life of the Disputed Domain Name. Thus, there was no bad faith registration of the Disputed Domain Name as it was registered by Respondent before the filing of Complainant’s Marks.
IV. COMPLAINANT IMPERMISSIBLY: (i) INTRODUCES FACTS THAT WERE AVAILABLE PRIOR TO THE FILING OF ITS COMPLAINT, (ii) REBUTS ARGUMENTS THAT IT REASONABLY SHOULD HAVE ANTICIPATED IN ITS COMPLAINT, AND (iii) ATTEMPTS TO AMEND ITS COMPLAINT.
For the reasons stated in Sections 2(I), (II), and (III) above, there is enough reason for this Panel to disregard Complainant’s Additional Submission, find in favor of the Respondent and deny Complainant’s requested remedy, and make a finding of RDNH against the Complainant.
However, to ensure completeness, provide clarifications and correct any misleading statements, Respondent’s Additional Submission specifically responds to the statements and allegations contained in Complainant’s Additional Submission:
[a] In Complainant’s Additional Submission Paragraph I(a), Complainant alleges that Respondent has acquired over 3,700 domain names. The source of Complainant’s information was clearly available prior to Complainant’s filing of its Complaint via DomainTools.com and is of no substantial value. Accordingly, the Panel may disregard this allegation. However, to the extent the Panel takes this into consideration, Respondent confirms that it has acquired over 3,700 domain names in its portfolio that are generic and descriptive terms, geographically descriptive designations, surnames, and acronyms for future use.
[b] In Complainant’s Additional Submission Paragraph I(b), Complainant alleges that Respondent was involved in 33 UDRP proceedings and is acting in a pattern of preventing owners of trademarks from reflecting their marks in corresponding domain names. The source of Complainant’s information was clearly available prior to Complainant’s filing of its Complaint via UDRPSearch.com and is an attempt to amend Complainant’s complaint by asserting additional facts and broadening its allegations. Accordingly, the Panel should disregard these allegations.
However, to the extent the Panel takes this allegation into consideration, Respondent indicates the following:
[i] As noted in the Response, Complainant is not prevented from reflecting its mark (SITTERCITY) in a corresponding domain as Complainant is the owner of the domain name sittercity.com. Accordingly, there is no inappropriate pattern of conduct that is applicable to this case.
[ii] From July 2007 through the present, a period of five years, there are only four UDRPs identified in Complainant’s complaint, three of which were identified in the Complaint (the one WIPO complaint was not identified). However, as discussed in the Response, for each case: 1) Respondent was not made aware of any issues with the domain at issue until after the complaint was filed, 2) Respondent offered to transfer the domain to the complainant at no cost upon notification of the complaint, and 3) Respondent chose not to contest the complaint. Accordingly, Respondent demonstrated elements of good faith to resolve the disputes as soon as they were made aware of the issue.
[iii] In regard to the remaining UDRPs referred to by Complainant’s Additional Submission that are all over five years old, Respondent asserts that it acted in good faith consistent with its behavior in the last five years by offering to transfer the domain to the complainant at no cost and/or choosing not to contest the complaint in a majority of the cases. Complainant’s Additional Submission has actually established that the number of UDRP filings against the Respondent has been drastically reduced over the recent years (despite having such a large portfolio of domain names). Contrary to Complainant's claims, this is proof that Respondent does not purposefully target trademarks and rather takes significant measures to avoid infringing on any trademark owner's rights.
[iv] Finally, Respondent points out that each case Respondent was involved in was independent of each other and was decided based upon the facts surrounding each individual incident. As each UDRP is unique in its circumstances and since Respondent has acted in good faith to resolve any issues as they arise in a timely and efficient manner, Respondent deserves the benefit of an impartial Panel that does not take into account inflammatory facts raised by the Complainant, especially in an Additional Submission, that suggests Respondent’s involvement in past UDRPs has any weight in this case. Specifically, as clearly demonstrated in First American Real Estate Solutions L.P. v. Manila Industries, Inc., FA0607000758614 (NAF September 18, 2006), despite Respondent having been involved in several UDRPs prior to that case arising, the Panel reviewed the facts of the UDRP independently and found that Complainant “failed to establish all three elements required under the ICANN Policy” and accordingly decided “that relief shall be DENIED.” Hence, Respondent awaits this Panel’s review of the Complainant’s misrepresented facts and failure to establish all three elements required under the ICANN Policy to issue its denial of any relief requested, in addition to a finding of RDNH.
[c] In Complainant’s Additional Submission Paragraph I(c), Complainant alleges that Respondent’s use of a domain as a parking page to obtain click-through revenues may be an element of bad faith. Complainant cites the Policy and a couple of cases for its analysis, one of which is a case that involves the Respondent. The citations were clearly available prior to Complainant’s filing of its Complaint and appears to be an attempt to amend Complainant’s complaint by including additional cases and allegations. Accordingly, the Panel should disregard the additional allegations.
However, to the extent the Panel takes this allegation into consideration, Respondent indicates the following:
[i] Respondent does not incorporate Complainant’s trademark into the Disputed Domain Name. Any ads displayed on the Disputed Domain Name reflect its generic nature as it relates to Sitters and Universities. Accordingly, there is no exploitation of any trademarks or diversion of any Internet users. Furthermore, outside of mere allegations, Complainant has not provided any evidence of any diversion of any Internet users.
[ii] Additionally, Respondent reiterates that while some panels have found PPC parking pages not to be a legitimate interest (when other indicia of bad faith are present), other panels have determined that a business model using domain names for PPC parking pages is legitimate. See e.g. CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (NAF May 3, 2010). Therefore, using a PPC park page on the Disputed Domain Name, especially where there is no bad faith registration, does not weigh against the Respondent.
[d] In Complainant’s Additional Submission Paragraph II(a), Complainant attempts to rebut Respondent’s argument that the Disputed Domain Name is not similar to Complainant’s marks and tries to cite a case that involves the Respondent for its analysis. As Complainant anticipated this as an argument in its Complaint, it was already addressed. Although Complainant cites a case in its Additional Submission that indicates a finding of a domain that is confusingly similar to a mark, Complainant fails to address how that case is applicable in this instance. Accordingly, the incomplete analysis by Complainant in the Additional Submission appears to be for the sole purpose of amending the Complaint by the inclusion of the case cited that was available at the time of the Complaint. Accordingly, the Panel should disregard the additional analysis.
However, to the extent the Panel takes this rebuttal into consideration, Respondent indicates the following:
[i] The facts in Gorstew Limited v. Manila Industries Case No. D2007-0495 is easily distinguished from this case. Please note that Respondent, in good faith, did not submit a response in Gorstew. In any case, the marks at issue in Gorstew involved the words “SANDALS and BEACHES” and the domain name at issue was “sandalsandbeaches.com,” which incorporated both words, spelled correctly. In this case, the mark at issue is “SITTERCITY,” which consists of two generic words, Sitter + City, whereas the domain name at issue consists of one fanciful word that is made up of two words, Sitter + University. As “University” and “sity” are dissimilar from the word “City”, the Disputed Domain Name does not comprise the terms incorporated into Complainant’s Mark and is, therefore, not confusingly similar.
[e] In Complainant’s Additional Submission Paragraph II(b), Complainant further attempts to rebut Respondent’s argument that the Disputed Domain Name is not similar to Complainant’s Marks and again cites a case without addressing how it is applicable in this instance. Accordingly, the incomplete analysis by Complainant in the Additional Submission appears to be for the sole purpose of amending the Complaint by the inclusion of the case cited that was available at the time of the Complaint. Accordingly, the Panel should disregard the additional analysis.
However, to the extent the Panel takes the rebuttal into consideration, Respondent indicates the following:
[i] In regard to TRAVELOCITY.COM LP v. Leing Maj, FA0905001260772 (NAF June 15, 2009), Complainant fails to mention that the respondent in that case failed to file a response AND registered their domain after the complainant had filed for a trademark. Accordingly, although the domain in Travelocity involved a “c” being replaced with an “s” (travelosity.com), that mere fact alone is only one factor to help determine whether a domain is confusingly similar. To the extent there was a trademark for the word “chow” and the relevant domain at issue was “show.com”, the mere replacement of the “c” with an “s” does not in and of itself suggest the domain name is confusingly similar with the mark. Furthermore, when looking at “chow” and “show”, they have independent meanings and would most likely not be found to be confusingly similar. Thus, as in this case, the Panel should take into account that Respondent registered the domain before Complainant filed for their trademark and has provided a timely response that shows how two generic words, Sitter + University, have combined to create one fanciful term, Sittersity, which is easily distinguishable from SitterCity which consists of two distinct generic words.
[f] In Complainant’s Additional Submission Paragraphs II(d) and II(e), Complainant cites several WIPO cases and FORUM cases without providing a complete analysis of their applicability in this case as it relates to common law rights in an unregistered trademark. Furthermore, as indicated in the Response, Complainant misrepresented when the Disputed Domain Name was registered. Accordingly, as Respondent has shown in its Response, the Disputed Domain Name was registered before Complainant filed for their trademarks. Therefore, these additional incomplete citations relating to common law usage of a mark appear to be an attempt by Complainant to amend their Complaint by mere inclusion of the cases cited which were available at the time of the Complaint. Accordingly, the Panel should absolutely disregard the analysis.
However, to the extent the Panel takes the paragraphs into consideration, Respondent provides the same analysis it did in its Response by indicating the following:
[i] To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with complainant's goods and services. See First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA506772 (NAF August 22, 2005). Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA0611000836538 (NAF December 28, 2006); citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Furthermore, “the less distinctive a mark (i.e., the more descriptive or generic are the word or words making up the mark), the greater the scrutiny required to sustain a complainant’s assertion of common law trademark rights.” See Id; citing One Creative Place, LLC v. Kevin Scott, D2006-0518 (WIPO June 16, 2006); Deutsche Post AG v. NJDomains, D2006-0001 (WIPO March 1, 2006); Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (NAF Feb. 15, 2002).
[ii] As SitterCity is composed of two generic terms that are used in a descriptive manner to suggest an end user could use the site to find a ‘sitter’ in their ‘city’, it is less distinctive and should require greater scrutiny. Regardless of that fact, Complainant fails to provide sufficient secondary meaning for the mark from its first use in commerce in 2001 through 2004 (when Respondent registered the Domain Name). Specifically, Complainant fails to provide any amount of sales, the nature and extent of advertising, and consumer surveys during the period of 2001 through 2004. Complainant merely provides some information on limited media coverage and one sentence toward the distribution of flyers in the Boston area (where Complainant started its business), which does not suggest any coverage in California, where Respondent is based. These facts alone are well below the threshold necessary to provide secondary meaning. Furthermore, despite being aware of the requirements to establish secondary meaning via the Response and Complainant’s own research, Complainant still fails to provide additional information in their Additional Submission to satisfy this criterion. Therefore, Complainant is unable to establish common law trademark rights for its unregistered trademarks between the years 2001 to 2004, has no showing of any bad faith by Respondent and should not be permitted to receive protection under the Policy.
[g] In Complainant’s Additional Submission Paragraph III(b), Complainant attempts to address its oversight on correspondence with the Respondent that would go towards Respondent’s good faith efforts to resolve the situation outside of the UDRP. Complainant not only introduces facts that were available prior to the filing of its Complaint but continues its misrepresentation of facts and blames an inexcusable error on their end to rebut arguments that it reasonably should have anticipated in its Complaint. Accordingly, the Panel should absolutely disregard this paragraph, if not the entire Additional Submission.
However, to the extent the Panel takes the allegations and rebuttal into consideration, Respondent indicates the following:
[i] Complainant suggests Respondent received the original e-mail dated December 15, 2011 that was sent to the Moniker Privacy e-mail address, however, there is no evidence of such receipt and it is possible that the registrar’s privacy service failed to forward such e-mail. Regardless, Respondent’s prompt reply to Complainant’s e-mail on March 26, 2012, which was addressed to manilaindustries@gmail.com (not the Moniker Privacy e-mail as alleged in Complainant’s Additional Submission), clearly shows that Respondent would have replied to the December 15, 2011 e-mail, had it been received. Accordingly, there is no evidence of Respondent trying to ignore Complainant.
[ii] Complainant suggests that Respondent’s response shows intent of selling the domain, however, Complainant fails to identify which response and/or what Respondent stated or did that would suggest the sale of a domain. In any case, “there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy.” See Trip.com, Inc. v. Daniel Deamone, D2001-1066 (WIPO). In this case, upon receiving correspondence from Complainant, as the Disputed Domain Name does not violate any third party trademark rights, Respondent has a legitimate interest in the Disputed Domain Name and did not register the Disputed Domain Name in bad faith; Respondent requested an offer for the Disputed Domain Name. Accordingly, there is no evidence of any bad faith and/or anything inherently wrongful with respect to the request for an offer for the Disputed Domain Name.
[iii] Complainant’s representative suggests that an e-mail sent outside of their case management system was the cause of the error in not submitting the correspondence exchanged with Respondent in March 2012. This excuse is not acceptable as the case number cited in the December AND March correspondence is the same – Case 1215. Therefore, Complainant’s failure to either make notes and/or look at notes for Case 1215 prior to the filing of the Complaint is incomprehensible. Furthermore, Complainant’s representative has filed hundreds of UDRP cases. Accordingly, sending not just one, but two e-mails (including one in reply to our initial response to their March 26, 2012 e-mail) outside of their normal case management system and/or failing to track such e-mails appears to be unimaginable, especially after boasting about their new automated HawkUDRP product. Therefore, the only explanation is that Complainant did not expect Respondent to file a response to uncover this discrepancy which would demonstrate a clear attempt at misrepresenting the facts in this matter. Thus, this inappropriate activity should lead to a finding of RDNH.
[h] In Complainant’s Additional Submission Paragraph III(c), Complainant suggests that Respondent has no plans of legitimate use for the Disputed Domain Name. However, Respondent has shown potential plans for the Disputed Domain Name via a similar domain portal with educational links that may be applied. As Complainant has noted, Respondent owns thousands of domains. Accordingly, it is not realistic for Respondent to build out and/or have a written plan for all domain names in a short period of time. Therefore, the Disputed Domain Name will remain on a park page until Respondent is able to devote time to build it out.
[i] In Complainant’s Additional Submission Paragraphs III(d) and (e) and Paragraph IV(c), Complainant attempts to rebut Respondent’s claim of legitimate interest in the Disputed Domain Name and good faith by suggesting PPC park pages are not legitimate use and that offering a domain for sale is an element of bad faith. In addition to rebutting arguments the Complainant should have anticipated in the Complaint, Complainant’s incomplete analysis suggests they are attempting to amend the Complaint by the inclusion of arguments and the cases cited that were available at the time of the Complaint. Accordingly, the Panel should disregard the additional analysis.
However, to the extent the Panel takes the rebuttal into consideration, Respondent indicates the following:
[i] Complainant suggests that The Landmark Group v. Digimedia L.P., FA0406000285459 (NAF August 6, 2004) and other cases are not applicable to Respondent’s current business PPC park page model because “SITTERSITY” is not a generic dictionary term that would produce ads related to their dictionary meaning. Although “SITTERSITY” is not a generic dictionary word on its own, it is also not a registered trademark. As Respondent has indicated in its Response, and as shown in Complainant’s complaint, the first sponsored link on the Disputed Domain Name relates to an educational institution, “MyEduSeek.com.” Accordingly, the Sponsored Links on the domain name are directly related to the dictionary keywords incorporated into the domain name: Sitter + University. Therefore, the current use of the Domain Name is permitted under the Policy and Landmark.
[ii] Complainant also identifies PPC links to the Complainant and its competitors since December of 2011, in addition to offering the Disputed Domain Name for sale to third parties. Unfortunately, the Additional Submission appears to be some articles referring to Complainant that were already provided in the Complaint. Accordingly, Respondent is unable to address this particular allegation and suggests that the Panel disregard this information as irrelevant.
[iii] Any and all PPC links on the Disputed Domain Name relates to the generic terms Sitter or University and are not targeting Complainant’s Marks. In addition, Respondent denies any allegation that the Disputed Domain Name was offered for sale to third parties, let alone in any bad faith manner (See also Section 2(IV)(g)(ii) above for additional analysis). As Respondent has a legitimate interest in the Disputed Domain Name, did not register the Disputed Domain Name in bad faith, and the Disputed Domain Name is not confusingly similar to Complainant’s Marks, the mere request for an offer, without more, is not bad faith. See Trip.com, Inc. v. Daniel Deamone, D2001-1066 (WIPO).
[j] In Complainant’s Additional Submission Paragraph IV(b), Complainant alleges that the Disputed Domain Name was registered by Texas IPA in bad faith. As discussed in Section 2(III) above, Texas IPA was merely a private whois service and was not the original registrant of the Disputed Domain Name. Respondent was the original registrant. Furthermore, as is clearly evidenced by Respondent in its Response, the Disputed Domain Name was created in 2004, not 2007 or 2010 or any other date the Complainant has identified. It is absolutely improper for Complainant to continue to assert baseless accusations for when the Disputed Domain Name was created and by whom as Respondent has provided evidence of the create date and now further evidence of its affiliation with the Disputed Domain Name in 2004, both of which are before Complainant filed for its Marks. The source of Complainant’s information for this paragraph was clearly available prior to Complainant’s filing of its Complaint via DomainTools.com and is of absolutely no value to this case aside from providing another misrepresentation of the facts and trying to misguide the Panel. Accordingly, the Panel should disregard this allegation as there is no reason to take it into consideration.
(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.
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 Complainant to prove each of the following three elements to obtain an order canceling or transferring a domain name:
(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.
The Panel would like to publicly thank both parties for their timely and vigorous advocacy, which focuses the Panel’s attention on the important details in this matter.
Complainant’s business connects families with pre-screened caregivers, including babysitters, nannies, tutors, elder care providers, pet sitters, and housekeepers. Complainant offers these services under the SITTERCITY and SITTERCITY.COM marks. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SITTERCITY mark (Reg. No. 3,029,158 filed January 3, 2005; registered December 13, 2005), SITTERCITY mark & Design (Reg. No. 3,029,159 filed January 3, 2005; registered December 13, 2005), and SITTERCITY.COM mark (Reg. No. 3,050,204 filed January 3, 2005; registered January 24, 2006). Based on Complainant’s USPTO trademark registrations provided, this Panel concludes Complainant owns rights in the SITTERCITY, SITTERCITY & Design, and SITTERCITY.COM marks under Policy ¶4(a)(i), dating back at least to the filing date of January 3, 2005. 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.”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”).
Based upon the first use noted in the USPTO application, Complainant began using its mark on September 15, 2001. In Complainant’s Additional Submission, Complainant claimed to own common law rights in the SITTERCITY and SITTERCITY.COM marks from 2001. In the Complaint, Complainant claims it was founded in 2001 and offers its services under the SITTERCITY and related marks. Complainant provides the Panel with articles from 2001 and 2002 identifying Complainant by both its SITTERCITY and SITTERCITY.COM marks (although it should be noted the article from 2001 did not bear a specific date). Complainant also includes a table of news stories, from 2001 to 2004, which discuss Complainant and Complainant’s SITTERCITY and SITTERCITY.COM marks. The WHOIS information for Complainant’s <sittercity.com> domain name lists May 6, 2000 as the registration date (although Complainant does not contend it was operating that early). Complainant has apparently continuously and extensively used the SITTERCITY and SITTERCITY.COM marks since 2001. Therefore, this Panel concludes Complainant owns common law rights in the SITTERCITY and SITTERCITY.COM marks under Policy ¶4(a)(i) reaching back to September 15, 2001. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant argues Respondent’s <sittersity.com> domain name is confusingly similar to Complainant’s marks. Complainant claims the combination of the terms “SITTER” and “CITY” does not have an independent meaning and is only a reference to Complainant’s SITTERCITY mark. Complainant contends the exchange of the letter “s” for the letter “c” is not a large enough difference to adequately distinguish the disputed domain name from Complainant’s SITTERCITY mark. The disputed domain name also contains the generic top-level domain (“gTLD”) “.com”, which is disregarded when determining if the disputed domain name is confusingly similar to Complainant’s mark. Both of these items fail to sufficiently distinguish the disputed domain name from Complainant’s SITTERCITY mark, leading the Panel to conclude Respondent’s <sittersity.com> domain name is confusingly similar to Complainant’s SITTERCITY mark pursuant to Policy ¶4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); 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.”).
The Panel is not convinced by Respondent’s argument the <sittersity.com> domain name is comprised of common and generic terms and therefore cannot be confusingly similar to Complainant’s mark as a matter of law. The Panel need only determine if Complainant has rights to the mark and if the mark is confusingly similar to the disputed domain names. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶4(a)(ii) and Policy ¶4(a)(iii) and not under Policy ¶4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶4(a)(ii) and 4(a)(iii)). While the USPTO would have refused registration to Complainant’s trademark if it was too generic, it did not do so. This Panel will not second guess any trademark registration authority, including the USPTO. The fact Complainant’s rights to the mark might be arguably weak does not mean Complainant has no rights.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 contends Respondent is not commonly known by the disputed domain name. Complainant argues the WHOIS information listing “Domain Administrator” as the registrant, suggests Respondent is commonly known by a moniker other than the <sittersity.com> domain name. Complainant claims it did not authorize Respondent’s use of Complainant’s marks. In light of this uncontested evidence, the Panel holds Respondent is not commonly known by the <sittersity.com> domain name for the purposes of Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent’s <sittersity.com> domain name resolves to a website containing generic hyperlinks to third-party websites, some of which compete with Complainant’s business. This Panel does not believe a Respondent can acquire rights in a domain name in commercial context while the domain name is held privately, meaning the registered owner is holding the disputed domain name for an undisclosed principal. An undisclosed commercial principal cannot acquire commercial rights to a mark while concealing its identity.
While some might argue a commercial privacy service could acquire rights, that argument is absurd. No commercial privacy service would be cognizant of acquiring any rights nor would it have the intention to do so. A secondary meaning cannot be acquired by someone who is not actually using the domain name (the nominee). A commercial privacy service does not actually use a disputed domain name. The beneficial owner of the domain name controls the use of the domain name to the exclusion of the nominee.
The next issue is whether a pay per click parking page is making a bona fide offering of goods and services. This Panel does not believe using a domain name solely to publish other links is a bona fide offering of goods or services, whether or not the domain name is generic.
The fact Respondent was planning on using the disputed domain name at some indeterminate time in the future is not adequate under Policy ¶4(c)(i), which reads:
[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” Respondent did not provide any evidence of particular plans to use this domain name. The fact Respondent has not actually taken any steps to use the domain name since registering it on November 27, 2004 suggests Respondent is simply holding the domain name passively.
Respondent argues it does not control the content of its parking page, which is presumably controlled by the registrar. That is probably true. However, the owner of a domain is responsible for the use of its domain name. The fact Respondent might have a lot of domain names does not mean Respondent isn’t responsible for the content of a website on one of its domain names. Respondent could have parked a domain name on a static “under construction” page. Registrars often provide payments in cash (or in kind) for using their pay per click parking page.
The Panel finds Policy ¶4(a)(ii) satisfied.
In Complainant’s Additional Submission, Complainant claims Respondent offered to sell the <sittersity.com> domain name to Complainant on April 13, 2012 at the appraised value of $14,000. Respondent’s offer to sell the disputed domain name for $14,000 is evidence Respondent registered and uses the <sittersity.com> domain name in bad faith pursuant to Policy ¶ 4(a)(i) because it exceeds Respondent’s out-of-pocket expenses. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant argues Respondent has been a respondent in previous UDRP proceedings in which the panels have ordered the transfer of the disputed domain names to the respective complainants. See Gregg Appliances, Inc. v. Manila Indus., Inc. / Domain Admin, FA 13868772 (Nat. Arb. Forum June 7, 2011); see also Everest Nutrition, Inc. v. Manila Indus., Inc., FA 1313264 (Nat. Arb. Forum Apr. 20, 2010); see also Haas Automation, Inc. v. Manila Indus., FA 1280229 (Nat. Arb. Forum Sept. 29, 2009). Complainant claims Respondent holds registrations for domain names that contain typosquatted versions of the marks of third parties, which Complainant claims is also evidence of bad faith registration and use of the <sittersity.com> domain name.
First of all, the UDRP does not refer to “typosquatting”. If a complainant asserts a respondent “typosquatted” but does not otherwise make out a case under the UDRP, the complainant must lose.
Second, the only time the UDRP refers to a pattern of conduct is Policy ¶ 4(b)(ii), which provides: “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.” Complainant cannot (and does not) make that allegation here because the facts do not support it. Complainant clearly owns the <sittercity.com> domain name. Respondent should not be penalized for defending UDRP cases, even if it loses repeatedly. Respondent is entitled to a fair hearing on each and every case it is involved with.
Normally, this Panel draws a negative inference from a domain name being registered by a nominee. In this case, Respondent admits it has a large catalog of domain names. It argues it had a valid business reason for using a privacy service (an issue this Panel explicitly declines to rule upon). While the number of domain names isn’t normally a factor in making this determination, 3700 domain names is an extremely large catalog. The Panel would be hard pressed to determine a bona fide business model that required so many domain names. Respondent claims it kept the disputed domain name registered without disclosing its identity while it made preparations to exploit this domain name. Regrettably, 2,816 days passed without Respondent actually exploiting these domain names. Under these circumstances, the Panel must conclude Respondent registered the domain name in bad faith and used it in bad faith (actually “not used” under the facts of this case).
This element requires Complainant to prove Respondent registered and uses the domain name in bad faith. In this case, Respondent registered the domain name on November 27, 2004, which is some considerable time after Complainant began using its mark on September 15, 2001. While Respondent claims it registered the disputed domain name before Complainant acquired rights to the mark, this Panel finds to the contrary (even though Respondent acquired the disputed domain name (November 27, 2004) before Complainant filed its application with the USPTO on January 3, 2005). In light of these facts and the 2,816 day delay in using the disputed domain, the Panel must conclude Respondent knew of Complainant’s mark when the disputed domain was registered.
Complainant argues Respondent’s registration and use of the <sittersity.com> domain name disrupts Complainant’s business. Complainant claims Respondent uses the disputed domain name to host third-party hyperlinks, including hyperlinks to Complainant’s competitors. The Panel determines such a use disrupts Complainant’s business and holds Respondent registered and uses the <sittersity.com> domain name in bad faith for the purposes of Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”).
Complainant further claims that Respondent is attempting to take advantage of Complainant’s well known mark to commercially gain. Complainant argues Respondent generates revenue from click-through fees, which Complainant alleges Respondent receives each time one of the hyperlinks is clicked. Complainant contends Respondent is attempting to misdirect Internet users in order to increase the amount of click-through fees Respondent receives. Given Complainant acquired rights to its mark in 2001 and Respondent registered the disputed domain name on November 27, 2004, the Panel concludes Respondent is attempting to commercially benefit from Internet user confusion and Respondent registered and uses the <sittersity.com> domain name in bad faith under Policy ¶4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
In Complainant’s Additional Submission, Complainant alleges the earliest date the <sittersity.com> domain name was registered is 2007 and Respondent took possession of the domain name in 2008. Complainant admits the original WHOIS information provided by Complainant was inaccurate although the documentation with submitted with the Complaint verified this misinformation (making Complainant’s error understandable). Nevertheless, the Panel accepts Respondent’s claim it registered the domain name on November 27, 2004.
The Panel finds Policy ¶4(a)(iii) satisfied.
Reverse Domain Name Hijacking
This claim is moot in light of the fact Complainant prevailed in this proceeding.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <sittersity.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 15, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page