Fotolog, Inc. v. Cesar
Rodriguez Cesar
Claim Number: FA0712001124439
PARTIES
Complainant is Fotolog, Inc. (“Complainant”), represented by Joel
Karni Schmidt, of Cowan Liebowitz & Latman, P.C., 1133
Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geofotolog.com>, registered with Pricedomain.ca.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 21, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 24, 2007, Pricedomain.ca confirmed by e-mail to the
National Arbitration Forum that the <geofotolog.com> domain name is
registered with Pricedomain.ca and that
the Respondent is the current registrant of the name. Pricedomain.ca
has verified that Respondent is bound by the Pricedomain.ca
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On January 4, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 24, 2008
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@geofotolog.com by
e-mail.
A timely Response was received and determined to be complete on January 24, 2008. However, the Response was not received in
hard copy as required by ICANN Rule 5.
Complainant filed its Additional Submission in a timely manner however
the accompanying filing fee was received late and, thus, is not in compliance
with Supplemental Rule No. 7. The Panel
chooses not to consider Complainant’s Additional Submission.
On January 31, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of the most popular, largest and highly used online
photograph-posting and social networking websites in the world. Complainant offers its users the ability to
post and share photographs and to meet and connect with friends, family, and
other users online. With more than 10
million members in more than 200 countries, Complainant offers a truly global
forum and community to its members.
Complainant registered the FOTOLOG name with the United States Patent and
Trademark Office, as Service Mark, Registration Number 3,040,613, registered
January 10, 2006 and showing first use in commerce as May 18, 2002.
Complainant has been using FOTOLOG as its company name and mark since
as early as 2002. Complainant has used the FOTOLOG name and mark in connection
with its top level domain names, <fotolog.com>, <fotolog.net>,
<fotolog.eu> as well as numerous variations thereof in the .com and other
gTLDs and numerous similar country code domain name registrations.
Respondent is the owner of the domain name <geofotolog.com> which Respondent registered on October 10,
2007. Respondent’s domain name is
confusingly similar to Complainant’s FOTOLOG mark, and simply combines it with
a descriptive prefix.
Respondent’s <geofotolog.com> domain name is
virtually identical to the URL of Complainant’s Member Directory page located
at <geo.fotolog.com>.
Respondent is not a licensee of Complainant, nor has Respondent ever
been authorized by Complainant to use the FOTOLOG Name and Mark or to register
the domain name. Respondent is not known
as <geofotolog.com> and does
not actually engage in any business or commerce under the name FOTOLOG.
Respondent had actual or constructive notice of Complainant’s use and
registration of the FOTOLOG Mark.
Respondent’s registration and use of a domain name containing
Complainant’s identical mark is inherently deceptive and is likely to confuse
Internet users as to the source, sponsorship, affiliation, or endorsement of
Respondent’s site. Even if consumers
ultimately recognize that they are on the wrong website, the initial confusion
of consumers who type in <geofotolog.com> in an attempt to
access Complainant’s site, but instead reach Respondent’s website is itself
sufficient to support a finding of bad faith.
B. Respondent
Respondent states that FOTOLOG is generic. Respondent states that he had no knowledge of
<fotolotg.com> and desired to use the domain name as a personal
space. Complainant is not losing
anything. Respondent is Spanish and used
the word “foto” as the Spanish word for photo.
FINDINGS
1.
Complainant
is a corporation which operates a business of online photograph posting and
social networking websites. Complainant
has consistently been ranked among the top 10 websites in the world, including
2.
Complainant
owns a registration with the United States Patent and Trademark Office for the
mark, FOTOLOG which predates Respondent’s registration of the disputed domain
name.
3.
The
domain name <geofotolog.com>
is confusingly similar to Complainant’s mark, FOTOLOG.
4.
Respondent
has no rights to or legitimate interests in the <geofotolog.com> domain name.
5.
The
disputed domain name was registered in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Complainant asserts rights in the FOTOLOG
mark through its registration of the mark with the United States Patent and
Trademark Office. This registration
sufficiently establishes Complainant’s rights in the mark pursuant to Policy,
Paragraph 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA198803 (Nat.
Arb. Forum Nov. 11, 2003) holding “Complainant’s federal registrations
establish Complainant’s rights in the BLIZZARD mark.” See
also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
holding “Panel decisions have held that registration of a mark is prima facie
evidence of validity, which creates a rebuttable presumption that the mark is
inherently distinctive.”
Complainant contends that Respondent’s <geofotolog.com> domain name is
confusingly similar to Complainant’s FOTOLOG mark as the disputed domain name
incorporates the exact mark and merely adds the generic term “geo” to the
beginning of the mark along with the generic top-level domain “.com.” Neither
the addition of a generic term nor the top-level domain renders the disputed
domain name distinct from the Complainant’s corresponding mark. The <geofotolog.com>
domain name is confusingly similar to Complainant’s FOTOLOG mark pursuant
to Policy, Paragraph 4(a)(i). See Arthur Guinness Son & Co. (
While Respondent contends that the <geofotolog.com> domain name is
comprised of common, descriptive terms and as such cannot be found to be
identical or confusingly similar to Complainant’s mark, such a determination is
not necessary under Policy, Paragraph 4(a)(i) as this portion of the Policy
considers only whether Complainant has rights in the mark and whether the
disputed domain name is identical or confusingly similar to Complainant’s
mark. See Vance Int’l Inc v. Abend, FA970871 (Nat. Arb. Forum June 7,
2007) finding that because the complainant had received a trademark
registration for its VANCE mark, the respondent’s argument that the term was
generic failed under this section. See also David Hall Rare Coins v.
Complainant prevails under the requirements
of Policy, Paragraph 4(a)(i).
Complainant must first make a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy, Paragraph 4(a)(ii) and then the burden shifts to
Respondent to show that he does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA741828 (Nat. Arb. Forum Aug. 18, 2006) holding that the
complainant must first makes a prima facie case that the respondent lacks
rights and legitimate interests in the disputed domain name under the Policy,
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, FA780200
(Nat Arb. Forum Sept. 25, 2006).
Complainant asserts that there is no evidence
that Respondent, Cesar Rodriguez Cesar is commonly known by the <geofotolog.com> domain
name. Complainant contends that it has
no relationship with Respondent and has never authorized Respondent to use its
FOTOLOG mark. Under these circumstances,
Respondent is required to produce “concrete evidence that it has rights to or
legitimate interests in the domain name at issue…” since that information is
“uniquely within the knowledge and control of the respondent.” See Do The Hustle
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent is required to respond
specifically to the statements and allegations contained in the complaint and
include any and all bases for the Respondent to retain registration and use of
the disputed domain name. See Rule 5,
Rules for Uniform Domain Name Dispute Resolution Policy.
In this case, Respondent presents no concrete
evidence of any kind. Respondent has
given this Panel no evidence at all upon which a finding of legitimate rights
to and legitimate interests can be based.
Respondent is not commonly known by the <geofotolog.com> domain name.
Respondent has never applied for a license or permission from the
complainant to use the trademarked name.
See Gallup Inc. v. Amish Country
Store, FA96209 (
Complainant prevails under the requirements
of Policy, Paragraph 4(a)(ii).
Complainant argues that Respondent
had actual or constructive knowledge of Complainant’s rights in its well known
and famous FOTOLOG mark when it registered the <geofotolog.com> domain name in October 2007. Complainant states that FOTOLOG operates in
Respondent’s home country of
Complainant prevails under the requirements of Policy, Paragraph 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geofotolog.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 11, 2008
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