Quepasa Corporation v.
Claim Number: FA0802001154319
PARTIES
Complainant is Quepasa Corporation (“Complainant”), represented by David
G. Baker, of Snell & Wilmer L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quepasachat.com>, registered with Compana, LLC.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 28, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 6, 2008.
On February 29, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <quepasachat.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 March 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 3, 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@quepasachat.com by e-mail.
A timely Response was received and determined to be complete on April 3, 2008.
On April 7, 2008, an Additional Submission was timely filed and
received.
As noted below, Respondent filed an Additional Submission on April 14,
2008.
On April 14, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Quepasa Corporation ("Quepasa")
(Nasdaq: QPSA), headquartered in
Arizona (with offices in Miami and Mexico),
operates <quepasa.com>, one of the world's largest bicultural Latino
online social communities, with more than one million registered users, and
more than two million daily hits. The
website serves users worldwide in both Spanish and English. Quepasa provides visitors with entertaining,
enriching and empowering services, features and content, including chat rooms,
entertainment, sports, health and fitness, fashion and breaking news, as well
as an active social network and Latin America TV channel video streaming. The site's appeal derives from its rich
bicultural environment, where members connect with others who share similar
passions and interests. In connection
with the <quepasa.com> website and other corporate activities, Quepasa
has developed substantial goodwill in its QUEPASA family of trademarks and
service marks, and as such, the marks are well-known to consumers.
In the present case, Respondent fully
incorporated Complainant's mark and merely added a generic term related to
aspects of Complainant's business. Therefore,
<quepasachat.com> is
confusingly similar to Complainant's QUEPASA mark.
Respondent has never used the domain name in
connection with a bona fide offering
of goods or services, nor made a legitimate non-commercial or fair use of the
domain name. Instead, the domain name
merely resolves to a parking page featuring links relating to Complainant's
type of business in the online chat industry. Respondent is capitalizing on Complainant's
well-known QUEPASA mark by attracting Internet users-likely including
Complainant's current and prospective customers-to its website and redirecting
them to websites potentially associated with Complainant's competitors,
presumably in exchange for click-through fees.
Complainant registered <quepasa.com> in
1998 and began using the QUEPASA mark in commerce at least as early as that
time. Not until more than six years
later did Respondent register the domain at issue-on February 28, 2005. Furthermore, <quepasachat.com> was registered more than ten months after
Complainant filed the federal trademark application for QUEPASA on April 10th,
2004. Therefore, it is highly likely
that Respondent had actual knowledge of Complainant at the time Respondent
registered the domain name at issue.
Respondent uses the subject domain name to
direct consumers to other commercial sites, presumably in return for
click-through fees. Earning referral
fees by linking to other websites resulting in commercial gain to Respondent is
Respondent is not commonly known by the name <quepasachat.com>. To the contrary, Respondent registered the
domain name under the name
The fact that <quepasachat.com> prominently features Complainant’s QUEPASA
mark is
B. Respondent
Complainant begins its Complaint with the three federal registrations
it claims give it rights under the Policy.
The Complaint lists the filing date but not the date that the
registrations were actually issued. The
reason for this is simple. The first
listed registration was filed April 10, 2004 but not actually registered until
May 23, 2006. The disputed domain was
registered February 28, 2005. Exhibit
A. Thus at the time the disputed domain
was registered none of the three registrations were yet complete and two were
not to be filed for another two years.
A search of the United States Patent & Trademark Office (“USPTO”)
for the term “que pasa” shows that, while now a dead mark, the earliest mark
was issued in 1975 for corn chips. Thus
the common term “que pasa” has been the ongoing subject of federal
registrations for over 30 years. It is
unclear that Complainant in this case has exclusive rights to the name at issue
under the Policy, because “[w]hatever the length of use by one party, use of
part or all of the mark by third parties weakens the mark’s overall strength.” Media
West-GSI,
Respondent contracts with Hitfarm which connects its own websites to
the domain names to offer a legitimate business of targeted advertising
searches that are legal everywhere in the world and are actually undertaken in
connection with industry leaders Google and Yahoo. The links in question are provided pursuant to
Yahoo or Google’s terms and are triggered by search requests entered by
computer users. There is no intent to
target Complainant, but to provide advertising for chat users as a glimpse of what
the disputed domain will show.
Respondent has no control over what terms advertisers bid on at Google or
Yahoo and what terms appear on its website.
Respondent registered the disputed
domain name because it believed it contained a descriptive term to which no
party had exclusive rights. In fact, the principal that the mere
ownership of a common term domain should, in and of itself, establish the
owner’s rights and legitimate interest has been recognized by several ICANN
panels.
The Complaint notes that bad faith registration can be inferred because of Complainant’s then pending trademark application when the disputed domain was registered. Respondent points out that the application was not published for opposition until November 8, 2005 – months after the disputed domain was registered in February of 2005. In fact it could have easily assumed that since the application had been pending for almost a year it would never be registered and it took another year to obtain this registration.
In this case, the Respondent in
C. Complainant’s Additional Submission
Complainant timely submitted an Additional Submission on April 7, 2008,
as follows:
Respondent asserts, contrary to Forum decisions,
that “Respondent may fairly use descriptive or generic terms as a commercial
domain name . . .regardless of whether they are federally registered.” (Resp. at 2; emphasis added.) Respondent is incorrect. While merely descriptive terms are not subject
to trademark protection, descriptive terms are subject to trademark
registration. Significantly, the USPTO
has determined that QUEPASA is not generic nor merely descriptive, and
Complainant respectfully submits that the Forum “is not empowered to nor should
it disturb that determination.” See
Respondent attempts to obfuscate the likelihood
of confusion analysis by pointing to other federal trademark registrations for
QUE PASA related to corn chips and other food products. (Resp. at 2-3.) However, showing registrations for products
completely unrelated to Complainant’s services is irrelevant to the determination
of Complainant’s rights in the QUEPASA trademark and highlights a significant
lack of understanding of trademark law.
Respondent has no rights or legitimate interests
in the subject domain name. Respondent
has never used the domain name in connection with a bona fide offering of goods or services, nor made a legitimate
non-commercial or fair use of the domain name. Instead, the domain name merely resolves to a
parking page featuring links relating to Complainant’s type of business in the
online chat industry.
Questions of trademark invalidity, including
questions of whether a mark is generic or highly descriptive and hence not
susceptible to legal exclusivity as a valid federal trademark, are simply not
within the purview of a UDRP proceeding and are best left for either court
adjudication or inter-partes adjudication before appropriate governmental
bodies having requisite jurisdiction and competence to handle such issues. Associated
Bank Corp. v.
However, Complainant notes what another panel
has found with respect to Respondent’s cybersquatting:
[Texas International Property Associates] has
established a pattern of conduct which is illustrated in fifty-seven domain
name dispute cases. In some of these
cases Respondent registered domain names that entirely appropriated another’s
trademark . . . These cases are a few examples contained in the archives of the
National Arbitration Forum. There are
eighteen WIPO cases of the same sort. What
seems obvious from all of these cases is that Respondent is exercising an extensive
use [of] the marks of others for Respondent’s financial gain. The Panel will not cite or analyze all of the
numerous cases involving this Respondent. This pattern of conduct alone shows bad
faith registration and use in this case.
All of this shows a high likelihood that
Respondent knew of Complainant and Complainant’s business at the time
Respondent registered the subject domain name. In fact, it stretches the imagination to
conceive how Respondent would not have known of Complainant. Respondent merely tries to justify its
cybersquatting activities and shows no evidence, other than bare,
unsubstantiated allegations of its lack of knowledge of Respondent, that the
domain name was not registered in bad faith.
D. Respondent’s Additional Submission
Respondent filed a Reply and Objection to Complainant’s Additional
Submission on April 14, 2008, as follows:
Under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), it is quite clearly stated that “In addition to the
complaint and the response, the Panel may request, in its sole discretion,
further statements or documents from either of the Parties.” Under the Forum’s Supplemental Rules, Rule 7
(“Rule 7”) allows for the filing of such statements and documents without a
request from the Panel. Respondent
believes that Rule 7 is an improper modification of the Rules.
Respondent notes that the Additional Submission contains no newly
discovered evidence nor did the Response raise any arguments which Complainant
could not have anticipated. The only
thing worth responding to is an oddity at the bottom of page 3 that Respondent
“deceptively failed to note” a federal registration of Complainant. What makes this odd is that Complainant, in
its own Complaint, did not make note
of the ‘666 registration’ that it claims the Respondent is deceptive in not
noting. Respondent was aware of the ‘666
registration’ but ignored it since the assumption was that Complainant did not
use that registration in its Complaint.
FINDINGS
(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.
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.
Initially, we observe that it is not the Panel’s function to determine
whether, as Respondent claims, Rule 7 is an improper modification of the
Forum’s rules.
The Panel finds that the <quepasachat.com> mark is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for distinguishing a disputed domain name from a registered mark because all registered domain names are required to have a top-level domain. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the QUEPASA mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Complainant must
first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain. The disputed domain name merely resolves to a parked page featuring links related to and competing with Complainant’s business. The Panel finds that such use is 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 eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001).
Although Respondent states that it is not responsible for the content on the website due to its third-party contract, Respondent did choose the terms which would appear on its website by choosing to register the <quepasachat.com> domain name. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Respondent is using
the disputed domain name to direct Internet users to competing websites,
commercially benefiting by receiving click-through fees. The Panel concludes that such use is evidence
of registration and use in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003).
Respondent’s use is
capable of disrupting Complainant’s business, and therefore is further evidence
of registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website.
It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
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 <quepasachat.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: April 28, 2008
National
Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page