Digg Inc. v. Digg, Inc.
Claim Number: FA0808001220833
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 <digg-inc.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2008.
On August 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <digg-inc.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 August 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 15, 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@digg-inc.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 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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:
Complainant operates a social content website available at the <digg.com> domain name with over 1,000,000 users worldwide.
Complainant’s site is consistently one of the most-visited
websites in the
Complainant has been using the DIGG mark since at least as early as December 5, 2004, in connection with its website.
Complainant holds a registration of its DIGG service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,422,895, issued May 6, 2008, filed Feb. 27, 2006).
Respondent registered the <digg-inc.com> domain name on August 14, 2007.
The disputed domain name resolves to a website that contains a mirror image of Complainant’s website resolving from its <digg.com> domain name.
Respondent’s <digg-inc.com> domain name is confusingly similar to Complainant’s DIGG mark.
Respondent does not have any rights to or legitimate interests in the <digg-inc.com> domain name.
Respondent registered and uses the <digg-inc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
In view of 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 draw such inferences it 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Although Complainant’s registration date of the DIGG service mark is subsequent to Respondent’s registration date of the <digg-inc.com> domain name, the relevant date in this case is the filing date of the mark registration application, which predates the disputed domain name’s registration date. Therefore, Complainant has sufficiently established its rights in the DIGG mark pursuant to 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 Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001):
The
effective date of Complainant's federal rights is . . . the filing date of its
issued registration.
See also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of a complainant’s trademark rights is the mark’s registration application filing date).
The <digg-inc.com> domain name contains Complainant’s entire mark and merely adds the generic term “inc” along with a hyphen. These additions do not distinguish the disputed domain name from Complainant’s mark for purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.
See also Health Devices Corp. v.
[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see Arthur Guinness Son & Co. (
The disputed domain name also contains the generic top-level domain “.com,” which is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Under this heading, Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <digg-inc.com> domain name. The burden then shifts to Respondent to establish that it does have rights to or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Green-peace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Complainant has sufficiently made out its prima facie showing under Policy ¶ 4(a)(ii), while Respondent, for its part, has failed to answer the Complaint. We are therefore free to conclude that Respondent has no rights to or legitimate interests in the contested domain name under the Policy. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
We will nonetheless examine the evidence of record to determine if there is any basis for concluding that Respondent has rights to or interests in the contested domain name sufficient to merit recognition under the Policy.
We begin by noting that there is no dispute as to Complainant’s
allegation to the effect that Respondent uses the <digg-inc.com> domain name to display a mirror image of
Complainant’s website. We conclude
therefore that Respondent is attempting to pass itself off as Complainant, so
that Respondent’s actions do not constitute 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). See Am. Int’l
Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that a respondent’s attempts to pass itself off as a complainant online by
means of blatant unauthorized use of that complainant’s mark is evidence that
that respondent has no rights to or legitimate interests in a disputed domain
name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):
It is neither a bona fide offerings [sic] of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name,
confusingly similar to a registered mark, attempts to profit by passing itself
off as Complainant . . . .
Furthermore, Respondent’s WHOIS
information does not indicate that Respondent is commonly known by the <digg-inc.com> domain name and
Respondent has not offered any evidence to suggest otherwise. Thus we conclude that Respondent is not
commonly known by the <digg-inc.com>
domain name under Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating that the fact that “nothing in Respondent’s WHOIS information implies
that Respondent is ‘commonly known by’ the disputed domain name” is a factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without
demonstrable evidence to support the assertion that a respondent is commonly
known by a domain name, that assertion must be rejected).
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
We have already concluded that Respondent uses the disputed
domain name to display a mirror image of Complainant’s website. The Panel finds that Respondent uses the <digg-inc.com>
domain name to divert Internet users to its website which constitutes disruption
of Complainant’s business and is thus evidence of bad faith registration and
use of the contested domain name 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).
In addition, by using the <digg-inc.com> domain name to pass
itself off as a possible source of Complainant’s services by displaying a
mirror image of Complainant’s website, as described, Respondent creates a likelihood
of confusion as to the possible affiliation of Complainant with the disputed
domain name and its corresponding website and thus constitutes evidence of bad
faith registration and use of the domain under Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that a
respondent fell within Policy ¶ 4(b)(iv) by displaying a complainant’s mark on
its website and offering services identical to those offered by that
complainant); see also Compaq Info. Techs. Group, L.P. v.
Waterlooplein Ltd., FA 109718 (Nat. Arb.
Forum May 29, 2002) (finding that a respondent’s use of the
<compaq-broker.com> domain name to sell a complainant’s products “creates
a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship,
or affiliation of the website and constituted bad faith pursuant to Policy ¶
4(b)(iv)”).
For these reasons, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <digg-inc.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 9, 2008
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