Digg Inc. v. Christopher Carey
Claim Number: FA0808001220832
Complainant is Digg Inc. (“Complainant”), represented by David
A. W. Wong of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <diggbefriend.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint August 18, 2008.
On August 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <diggbefriend.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. 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 August 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 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@diggbefriend.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <diggbefriend.com>, is confusingly similar to Complainant’s DIGG mark.
2. Respondent has no rights to or legitimate interests in the <diggbefriend.com> domain name.
3. Respondent registered and used the <diggbefriend.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Digg Inc., operates a social content website at its <digg.com> domain name. Internet users are able to submit, read and vote for content on Complainant’s website. Complainant has over a million registered users on its website. Complainant began its social website services December 1, 2004. Complainant first filed an application to register its mark with the United States Patent and Trademark Office (“USPTO”) on January 4, 2005. The USPTO registered Complainant’s DIGG mark on October 23, 2007 (Reg. No. 3,317,123). Complainant has also registered its DIGG mark with several other governmental authorities.
Respondent registered the disputed domain name April 26, 2007. Respondent’s disputed domain name mimics Complainant’s website, and prompts Internet users to submit private login information.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 registered its DIGG mark with the USPTO. The Panel finds this registration establishes
Complainant’s rights in its DIGG mark pursuant to Policy ¶ 4(a)(i) dating back
to the filing date of January 4, 2005. See
Respondent’s disputed domain name incorporates Complainant’s
DIGG mark with the additions of the term “be friend,” and the generic top-level
domain “.com.” The Panel finds
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i) because the additions of
a descriptive term and top-level domain do not sufficiently distinguish the
two. See
Arthur Guinness Son & Co. (
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove otherwise. The Panel finds that Complainant presented an adequate prima facie case to support its allegations, and that Respondent has failed to respond to these proceedings. Therefore, the Panel concludes that Respondent has no rights to or legitimate interests in the disputed domain name. However, the Panel examines the record to determine if the proof suggests that Respondent has rights to or legitimate interests in the domain name containing Complainant’s protected mark pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “Christopher Carey.” The record does not indicate that Complainant authorized Respondent to use its DIGG mark in any manner. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s disputed domain name resolves to a website that
mimics Complainant’s website resolving from its <digg.com> domain name
and asks Internet users to submit private login information. The Panel finds that Respondent’s attempt to
“pass itself off” as Complainant in order to “phish” for Internet users private
information is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website with a similar appearance to Complainant’s own website resolving from its <digg.com> domain name. Additionally, the disputed domain name prompts Internet users to submit private login information. The Panel finds that Respondent’s attempt to pass itself off as Complainant supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
Additionally, Complainant contends Respondent is using its website resolving from the confusingly similar disputed domain name that mimics Complainant’s website, to acquire Internet users’ private information. The Panel finds that Respondent’s actions support additional findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is attempting to mislead Internet users regarding Complainant’s affiliation with the website. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <diggbefriend.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 1, 2008.
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