TerraServer.com, Inc. v. www.wwwdomains4sale.com
Claim Number: FA0806001210053
Complainant is TerraServer.com, Inc (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <terraserve.com> and <terraserver.net>, registered with Godaddy.com, 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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 20, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <terraserve.com> and <terraserver.net> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 23, 2008.
On July 30, 2008 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant contends that:
§ It is the owner of two registered trademarks:
- the service mark TERRASERVER, serial number 76/534,179 and registration number 2,912,286, filed with the USPTO on July 21, 2003 and officially registered on December 21, 2004 for goods and services related to a website that provides photographic and geographic imagery and first used in commerce on March 1, 1998.
- the service mark TERRASERVER-USA, serial number 76/567453 and registration number 3,104,389, filed with the USPTO on December 16, 2003 and officially registered on June 13, 2006, for goods and services related to displaying satellite and aerial imagery on a computer and first used in commerce on May 1, 2003.
§ It also held a related prior registration which is now canceled for TERRA SERVER (note the space), serial number 75/447,092 and registration number 2,330,814, filed March 9, 1998 and officially registered March 21, 2000. The trademark was for goods and services related to a computer providing a database of photographic images and geographic information and was first used in commerce July 26, 1997. This trademark was filed by the previous corporate entity Aerial Images, Inc which was subsequently bought and renamed TerraServer.com, Inc.
§ It holds the domain name <terraserver.com>, first registered on July 26, 1997 and continuously in use for commerce since that date.
The disputed domain name <terraserve.com> is a misspelling of <terraserver.com> and is causing confusion in the marketplace.
§ The disputed domain name <terraserver.net> is a direct infringement upon the trademark TERRASERVER. Having a different top-level domain (TLD) from <terraserver.com> causes confusion in the marketplace and is an obvious trademark infringement.
§ The Respondent should be considered as having no rights or legitimate interests in the disputed domain as the websites located at <terraserve.com> and <terraserver.net> are typosquatting websites with advertising and there is no evidence that the domain has ever been used for any bona fide offering of goods and services.
§ The Respondent has tarnished the registered service mark of the Complainant by directing traffic intended for the Complainant website to a typosquatting website instead.
§ The mark TERRASERVER and domain name <terraserver.com> were widely known at the time the Respondent registered the disputed domain name having appeared in several prominent national and international publications including the New York Times, Washington Post, Wall Street Journal, Dallas Morning News, Denver Post, San Jose Mercury News and on many other newspapers via the Associated Press and Knight-Ridder
§ The Respondent has profited from the disputed domain names in bad faith by displaying advertising for products and service which the Complainant offers on the typosquatting websites located at <terraserve.com> and <terraserver.net>.
The websites displays advertising for competitors of the Complainant which the Respondent profits from. The websites also sometime display advertising from the Complainant through the Google, Yahoo, and/or Microsoft advertising networks which are displayed on the Respondent’s websites as the Complainant has no control over which websites the advertisements are displayed.
§ The Respondent has attempted to sell and transfer the domain registrations online, through an auction service, in excess of any reasonable out-of-pocket expenses.
§ To the cease and desist letter sent on September 25, 2007 of the Complainant sent a letter (see copy in annex) to the Respondent via certified mail which was signed for by the Complainant on September 28, 2007, the Respondent wrote, “[w]ere we to be approached by someone to buy the domains, we might make a business decision at that time.”
To the Complainant contentions the Respondent alleges the following:
§ The disputed domain name <terraserve.com> is not "clearly a misspelling of <terraserver.com>. “Terraserve” is the combination of the words "terra" and "serve," which are generic words.
§ The Respondent has used the disputed domain names for years and the Complainant could have, and should have discovered (with minimal effort or due
diligence) the existence of <terraserve.com> and <terraserver.net> years ago and this is a obligation which belongs to any diligent owner of trademarks.
§ There exists a multi-year relationship between Respondent and Complainant in the sense that Complainant has paid (through third parties) advertising revenue to the Respondent for the domain names at issue.
§ The <terraserve.com> and <terraserver.net> domain names have both been listed in the SEDO catalog for years and have both been responsible for directing visitors to the <terraserver.com> site thereby helping consumers to locate the product identified in the trademark
§ By advertising on SEDO, Complainant has tacitly accepted and approved the use of the terraserve.com and terraserver.net domains by the Respondent, and has accepted and approved of the usefulness of the domains <terraserve.com> and <terraserver.net> in directing consumers to Complainants web site. The Complainant evidenced such acceptance and approval.
§ The Complainant offers no support that Respondent had knowledge of the Complainant at the time of registration of <terraserve.com> or <terraserver.net>.
§ The Respondent had no knowledge of the Complainant at all at the time of registration as at the time of registration, September 18, 1998, <terraserver.com> led visitors to a site hosted by Microsoft, not by the Complainant.
§ Respondents Authorized Representative hereby states unequivocally that he created all the names in Respondents portfolio of domain names and that, prior to the correspondence annexed by Complainant, there has been no communication between Complainant and Respondent.
§ The Complainant has not demonstrated any circumstance of bad faith registration or use of the disputed domain names.
§ The Complainant offers no evidence whatsoever of cybersquatting to support the allegation "appears to be in the business of cybersquatting."
§ The Respondent is a significant shareholder of Nova Internet Services, Inc. (Nova) which was founded in 1996 and originally registered the names <terraserve.com> and <terraserver.net> for use by Nova but the other shareholders of Nova were not interested in "Terraserver” as a trade name and opted to stay with "Nova."
The Panel finds that the <terraserve.com> domain name is confusingly similar to the TERRASERVER mark under Policy ¶ 4(a)(i) as the disputed domain name omits the last “r” from the mark. The Panel also decides that the <terraserver.net> domain name is identical to Complainant’s mark. In addition, the Panel finds no indication of legitimate rights and interest of the Respondent in connection to the two disputed domain names and considers that the two disputed domain names were registered and used in bad faith.
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 TERRASERVER and TERRASERVER-USA marks by virtue of service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the marks (Reg. No. 2,912,286 issued December 21, 2004 and Reg. No. 3,104,389 issued June 13, 2006).
The Panel finds that these service mark registrations adequately establishes Complainant’s rights in the marks for the purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Additionally, Complainant asserts rights in the now cancelled TERRA SERVER mark which predate Respondent’s registration of the <terraserve.com> domain name on April 1, 1999. Complainant asserts that its predecessor-in-interest used the TERRA SERVER mark in connection with a database of photographic images and geographic information, which it claims was first used in commerce in July 1997. Complainant contends that its predecessor-in-interest held a service mark registration with the USPTO for the TERRA SERVER mark, which was filed on March 9, 1998 and registered on March 21, 2000. Complainant contends that it cancelled the TERRA SERVER registration when it purchased the predecessor company and changed its name to “<terraserver.com>, Inc.”
Complainant has thus established rights in the TERRA SERVER marks. See TERRASERVER.com, Inc. v. Constantin Tuculescu, FA 1100664 (Nat. Arb. Forum Dec. 3, 2007).
The Panel finds that the <terraserve.com> domain name is confusingly similar to the TERRASERVER mark under Policy ¶ 4(a)(i) as the disputed domain name omits the last “r” from the mark. The Panel also decides that the <terraserver.net> domain name is identical to Complainant’s mark. The disputed domain names add the generic top-level domains “.com,” and “.net” which previous panels have held, and this Panel finds, are irrelevant to a Policy ¶ 4(a)(i) analysis since all domain names must have a top-level domain. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel cannot identify any circumstance of rights and legitimate interest of the Respondent in the disputed domain names.
Respondent contends that it registered the <terraserve.com> and <terraserver.net> domain names in 1998 in connection with a business. However, Respondent states that the business chose not to use the disputed domain names, but nevertheless, Respondent retained the disputed domain names. The Respondent has not offer any evidence in this sense.
Respondent also states that the <terraserve.com> and <terraserver.net> domain names have previously been used to redirect Internet users to other websites owned and operated by Respondent.
None of the two circumstances may be considered by the Panel as showing demonstrable preparations of the Respondent to use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
In addition, the Panel finds that the Respondent is not commonly known by the <terraserve.com> and <terraserver.net> domain names under Policy ¶ 4(c)(ii). Complainant contends, and Respondent does not deny, that Respondent is not authorized to use Complainant’s mark in any way. The Panel agrees with Complainant’s contentions, and find for Complainant under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Moreover, Complainant asserts that Respondent’s lack of rights and legitimate interests in the <terraserve.com> and <terraserver.net> domain names under Policy ¶ 4(a)(ii) is further demonstrated by Respondent’s offer to sell the disputed domain names. Such circumstance can also indicate, in the opinion of the Panel, that Respondent has no rights or legitimate interests in the <terraserve.com> and <terraserver.net> domain names. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); 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).
Therefore, the Panel finds a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The disputed domain names were registered and used in bad faith.
The mark TERRASERVER and domain name <terraserver.com> were widely known at the time the Respondent registered the disputed domain name, having appeared in several prominent national and international publications including the New York Times, Washington Post, Wall Street Journal, Dallas Morning News, Denver Post, San Jose Mercury News and on many other newspapers via the Associated Press and Knight-Ridder.
The Panel agrees with the Complainant that it is plausible that the Respondent had knowledge about the Complainant trademark at the registration time of the disputed domain names and purchased them in order to knowingly profit from the conclusion. The post registration actions of the Respondent as the attempt to sell the disputed domain names for a price in excess of Respondent’s out-of-pocket costs for the disputed domain names or the use of the disputed domain names to advertise competitors of the Complainant confirm this presumption. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <terraserve.com> and <terraserver.net> domain names be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka, Panelist
Dated: August 12, 2008
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