InfoSpace, Inc. v. MustNeed.com
Claim Number: FA0711001108538
Complainant is InfoSpace, Inc. (“Complainant”), represented by Jan
Riggs, of InfoSpace, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <webcrawler.net>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@webcrawler.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <webcrawler.net> domain name is identical to Complainant’s WEBCRAWLER mark.
2. Respondent does not have any rights or legitimate interests in the <webcrawler.net> domain name.
3. Respondent registered and used the <webcrawler.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, InfoSpace, Inc., is a
leading global provider of Internet search, online directory, and distribution
systems for Internet users across North America and
Respondent registered the <webcrawler.net> domain name on
Respondent has also been the respondent in several previous
UDRP decisions in which the disputed domain names in those cases were
transferred from Respondent to the respective complainants. See CyberMatrix Corp., Inc. v. MustNeed.com, FA 236364 (Nat. Arb.
Forum
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the WEBCRAWLER mark through
its registration of the mark with the USPTO.
The Panel finds this registration sufficient to establish Complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <webcrawler.net> domain name is identical to Complainant’s WEBCRAWLER mark, as the disputed domain name incorporates the exact mark and merely adds the generic top-level domain (“gTLD”) “.net” onto the mark. As a top-level domain is a required element of all domain names, Respondent’s addition of the gTLD “.net” is irrelevant to the Policy ¶ 4(a)(i) analysis. Thus, the Panel finds that the <webcrawler.net> domain name is identical to Complainant’s WEBCRAWLER mark pursuant to Policy ¶ 4(a)(i). See Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to prove that Respondent lacks rights and legitimate interests in the <webcrawler.net> domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on Respondent’s failure to respond to the Complaint,
the Panel presumes that Respondent lacks rights and legitimate interests in the
<webcrawler.net> domain
name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
Complainant asserts that WEBCRAWLER is an invented term with
no meaning other than to identify Complainant’s services. Complainant thus argues that Respondent is
not, and cannot be, commonly known by the <webcrawler.net>
domain name. The Panel agrees with
Complainant’s argument, as there is no evidence in the record, including
Respondent’s WHOIS information, to indicate that Respondent is known by the
disputed domain name. Moreover,
Complainant has not authorized Respondent to use its WEBCRAWLER mark. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the <webcrawler.net> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
Respondent’s <webcrawler.net>
domain name resolves to a website featuring links to third-party websites
unrelated to Complainant, and the Panel assumes that Respondent earns
click-through fees from these links. As
such, Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
Furthermore, Respondent’s offer to sell the <webcrawler.net> domain name to Complainant for an amount in excess of its out-of-pocket costs also indicates that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent registered and is using the <webcrawler.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). As mentioned previously, the Panel presumes that Respondent benefits commercially when Internet users click on the links contained on the website that resolves from the disputed domain name. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s services, will be confused as to the source of the <webcrawler.net> domain name and Complainant’s affiliation with the corresponding website. The Panel finds this to be evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent’s offer to sell the <webcrawler.net> domain name to Complainant for an amount greater than its out-of-pocket costs also indicates that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration); see also 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).
In addition, Complainant points out that Respondent has been
the respondent in several previous UDRP decisions in which the disputed domain
names in those cases were transferred from Respondent to the respective
complainants. See CyberMatrix Corp., Inc. v. MustNeed.com,
FA 236364 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webcrawler.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 25, 2007
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