TerraServer.com, Inc. v.
www.wwwdomains4sale.com
Claim Number: FA0806001210053
PARTIES
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.
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.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
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 postmaster@terraserve.com and postmaster@terraserver.net 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.”
B. Respondent
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."
FINDINGS
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.
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 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).
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 <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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