Cybertania, Inc v. SimplyStatic, LLC
Claim Number: FA0904001258993
Complainant is Cybertania,
Inc (“Complainant”)
REGISTRAR AND DISPUTED DOMAIN
The domain name at issue is <myfreepaycams.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2009.
On April 30, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myfreepaycams.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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 2009 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@myfreepaycams.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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:
1. Respondent’s <myfreepaycams.com> domain name is confusingly similar to Complainant’s MYFREECAMS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <myfreepaycams.com> domain name.
3. Respondent registered and used the <myfreepaycams.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cybertania, Inc, is the owner of the MYFREECAMS.COM mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,129,466 issued August 15, 2006). Complainant has been using the MYFREECAMS.COM mark in conjunction with the marketing and advertising for its adult-oriented websites since its inception in March 2002.
Respondent registered the disputed domain name on August 13, 2007. Respondent is using the domain name to resolve to a website offering sponsored click-through links that further resolve to various adult-oriented websites, including those of Complainant’s competitors.
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 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 that 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 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.
The Panel finds that Complainant has established its rights in the MYFREECAMS.COM mark based on its registration of the mark with the USPTO under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that Respondent’s <myfreepaycams.com> domain name incorporates Complainant’s entire MYFREECAMS.COM mark, with the addition of the generic term “pay.” The Panel finds that Respondent’s domain name is confusingly similar because the addition of the descriptive term “pay” fails to create sufficient distinction between the mark and the disputed domain name, especially since the term “pay” relates to Complainant’s business activities. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests in the <myfreepaycams.com> domain name. For the purposes of a Policy ¶ 4(a)(ii)
analysis, Complainant must first meet its burden of production for its prima facie case. Once Complainant establishes its case that
Respondent lacks rights or legitimate interests, the burden then shifts to
Respondent to put forward evidence to show that it does have rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c). See
Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008)
(“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by
the complainant, the burden then shifts to the respondent to demonstrate its
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)). In this case, Respondent failed
to respond to the Complaint. The Panel
may find that by not submitting a response, Respondent has failed to invoke any
circumstance in which it could demonstrate any rights or legitimate interests
in the disputed domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). Complainant has presented its prima facie case and the Panel now
chooses to consider whether an evaluation of all the evidence presented
produces any rights or legitimate interests for Respondent under Policy ¶
4(c).
Complainant alleges that
Respondent is not authorized to use the MYFREECAMS.COM mark and
therefore has no rights or legitimate interests in the <myfreepaycams.com>
domain name. Complainant further alleges
that Respondent is not commonly known by the <myfreepaycams.com>
domain name. The WHOIS information lists
Respondent as “SimplyStatic, LLC.” The
Panel finds no evidence in the record to suggest that Respondent is commonly
known by the <myfreepaycams.com> domain name under 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 Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant also alleges that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is using the domain name solely to divert Internet users. Complainant asserts that Respondent is using the disputed domain name as a parked website containing various links to websites competing with Complainant, presumably causing Complainant to earn click-through fees. The Panel finds that such use is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair sue under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). Complainant asserts that Respondent is using
a confusingly similar domain name to attract Internet users to a website
containing commercial links to Complainant’s competitors’ websites, and that
such use represents bad faith registration and use under Policy ¶
4(b)(iii). The Panel finds that
appropriating Complainant’s MYFREECAMS.COM mark to divert Internet users
seeking Complainant’s websites to Respondent’s website at the <myfreepaycams.com>
domain name constitutes bad faith registration and use under Policy ¶
4(b)(iii). See
Complainant also alleges that Respondent’s use of the disputed domain name constitutes bad faith based on Respondent’s intentional attempt to attract Internet users to Respondent’s website for commercial gain pursuant to Policy ¶ 4(b)(iv). The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is presumably earning click-through fees based on the likelihood of confusion between Complainant’s MYFREECAMS.COM mark and Respondent’s <myfreepaycams.com> domain name and resolving website. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant has satisfied Policy ¶ 4(b)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <myfreepaycams.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 9, 2009
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