Cybertania Inc v. Forsyte Corporation
Claim Number: FA0904001259683
Complainant is Cybertania, Inc (“Complainant”), represented by Leo
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmyfreecams.com>, registered with Domainscostless.ca.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2009.
On April 28, 2009, Domainscostless.ca confirmed by e-mail to the National Arbitration Forum that the <wwwmyfreecams.com> domain name is registered with Domainscostless.ca and that the Respondent is the current registrant of the name. Domainscostless.ca has verified that Respondent is bound by the Domainscostless.ca 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 May 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 19, 2009.
On 26th of May 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends the following:
- The website “MYFREECAMS.COM” has been owned and operated since its inception in March 2002;
- The “MYFREECAMS.COM” service mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3495750 issued September 2, 2008)
-The website has required an investment of resources to enhance the popularity and reputation of the “MYFREECAMS.COM” mark;
- Substantial resources and millions of dollars were invested in marketing and advertising the “MYFREECAMS.COM” mark through a variety of channels including advertising networks such as Google Adwords;
-According to Google Analytics,
“MYFREECAMS.COM” currently receives in excess of 4 million unique visitors per
month. “Alexa.com” ranks “MYFREECAMS.COM” in the top 5,000 of all internet
websites, and in the top 2,000 in the
-“MYFREECAMS.COM” is a global business, with over 1,000,000 registered members, working with over 5,000 webcam performers in dozens of countries around the world, with millions in annual revenues;
- “MYFREECAMS.COM” is a unique name, invented by the Complainant, and never seen in commerce before the launch of the “MYFREECAMS.COM” website. As shown by Google Trends, until the “MYFREECAMS.COM” mark and website grew in popularity and reputation, Internet users did not search for “myfreecams” yet now it now it is listed as a significant search term;
-Substantial secondary meaning has been developed in the terms that comprise the “MYFREECAMS.COM” mark. Consumers identify the goods or services on which the descriptive term “myfreecams” appear with a single source. Even if the term is misspelled, modified, or rearranged, it is likely that customers are seeking the “MYFREECAMS.COM” mark and website;
Furthermore, Complainant also contends:
1. The Domain Name Is Confusingly Similar to Complainant’s Trademarks.
-Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s mark. The Disputed Domain Name incorporates the entire mark with slight deviation. The Disputed Domain Name is readily recognizable as a misspelling of Complainant's mark. Such change to Respondent’s domain is not sufficient to negate a finding of identicalness or confusing similarity;
-Respondent is using an identical or confusingly similar domain name to confuse customers searching for the mark that Complainant has built a strong reputation and secondary meaning around through its widespread and exclusive use of the marks in the promotion of its goods and services.
2. Respondent has no rights or legitimate interests in respect of the domain name
-Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to Policy ¶¶ 4(c) (i-iii);
-Respondent’s sole use of the Disputed Domain Name is to divert and confuse customers searching for Complainant’s mark. The diversion of consumers to Respondent’s website through confusion is not a bona fide offering of services;
-Respondent is not commonly known by the Disputed Domain Name. Respondent has never promoted or marketed the Disputed Domain Name to customers. Upon an Internet user’s entry of the Respondent’s Disputed Domain Name into a web browser, Respondent redirects Internet users to advertising for other websites with different domain names. Therefore, Respondent obscures its association with the Disputed Domain Name rather than establishing its association with the Disputed Domain Name;
-Respondent’s use of Disputed Domain Name does not constitute legitimate noncommercial or fair use, without intent to mislead and divert users for commercial gain, or to tarnish the trademark or service mark at issue. Upon an Internet user’s entry of the Disputer Domain Name into a Web Browser, the Internet user is diverted to links for various commercial websites, resulting in commercial gain for the Respondent. Respondent’s use of the confusingly similar Disputed Domain Name to the Complainant’s mark, coupled with the diversion to other commercial websites, creates confusion among Internet users and thereby tarnishes he trademark whose reputation Complainant has continually tried to uphold;
- Respondent has not been granted a license or permission to use the mark, nor has Complainant ever had any association with Respondent. Complainant has never granted any potential previous owner of the Disputed Domain Name license or permission to use its mark, nor has Complainant ever had any association with any potential previous owner;
3. Respondent’s Domain Name Was Registered and Is Being Used in Bad Faith.
-Respondent has registered and is using the Disputed Domain Name in bad faith according to Policy ¶ 4(b);
-Respondent is using the Disputed Domain Name in bad faith by typosquatting on Complainant's well-known mark and website. By so doing, Respondent is intentionally attempting to attract Internet users to its websites for commercial gain by creating confusion based on a common misspelling of Complainant's mark. Respondent likely receives click-thru fees or other advertising revenue from redirection of these Internet users;
-Respondent has intentionally registered the Disputed Domain Name that is confusingly similar to Complainant’s mark, well aware of the popularity and reputation of Complainant’s mark and website. The resulting confusion disrupts the business of Complainant while financially benefiting the Respondent;
-Respondent is intentionally capitalizing on the substantial goodwill of Complainant’s mark and website by using the confusingly similar Disputed Domain Name to divert Internet users. Respondent’s website does not contain any disclaimers of affiliation between Complainant and Respondent. Consumers searching for Complainant’s website are likely to become confused as to the affiliation of the Complainant to the Respondent’s websites, diluting the Complainant’s mark and disrupting the Complainant’s business;
-Respondent’s websites display advertising for services that compete with Complainant. The Disputed Domain Name redirects users to advertising which contains links to various adult websites, products and services, including ones offering “adult web cam” services in direct competition with the Complainant’s website and service.
B. Respondent contends the following:
- Respondent carries on the business of acquiring domain portfolios by registering domain names from the pool of domain name registrations that are deleted by the relevant registry on any given day. Successfully registered domain names are incorporated into a parked page search engine service which provides Internet users with up-to-date information on current events, sports, entertainment, travel, business and health.
- Respondent registered the Domain Name after it was released to the general public for registration by the dot-com registry, VeriSign. The Respondent registered the Domain Name in good faith and had no knowledge of the existence or activities of the Complainant at the time it registered the Domain Name. Further, the Respondent has a legitimate interest in the Domain Name as it is integral to the conduct of its business.
- Furthermore, Respondent also contends:
1. The Domain Name is not confusingly similar to a mark in which the Complainant has Rights
- As such, Complainant is not known by the mark;
- The Domain Name registration predates the registration of the mark;
- The Mark is of generic nature;
-The Respondent incorporated the disputed Domain Name into a parked page search engine service in order to generate advertising revenue and is therefore not confusing to Complainant, who provides telecommunications services;
- Given the difference in the services offered by the parties, the generic nature of the Domain Name, and the fact that the Domain Name registration by the Respondent predates the United States trademark registration of the Complainants Mark, it is submitted that an Internet user would not likely conclude that the Internet services offered by the Respondent are also offered by the same person who operates a telecommunications service under the trademark MYFREECAMS.COM.
-the Complainant has failed to prove the first test under section 4(a) (i) of the Policy.
2. The Respondent did not register the Domain Name in bad faith
- The Domain Name has never been offered for sale, for rent or otherwise;
- The Complainant has not shown, and cannot show, that the registration of the Domain Name is part of a pattern of conduct whose intention is to deprive the Complainant of its right to reflect its name in a corresponding domain name;
- The Respondent had no knowledge of the Complainant, and thus could not have had the intention to disrupt its professional activities;
- In addition, the Respondent is not a competitor of the Complainant;
- The registration of the Domain Name preceded the Complainants United States trademark registration of a name similar to the one in question. Thus, the Respondent could not have registered the Domain Name in order to misleadingly direct consumers to the Respondent’s site nor because it was confusingly similar to the Complainant’s mark, as it had no knowledge of the Complainant, or its business;
- There was no “intent” involved in the acquisition of the Domain Name. As part of its business plan, The Respondent carries on the business of acquiring domain portfolios by registering domain names from the pool of over 40,000 domain name registrations that are deleted by the relevant registry on any given day;
- No Human decision making is involved in the process of determining which domains the Respondent will choose to register, as the process is completely automated.
3. The Respondent has a legitimate interest in the Domain Name
- The Respondent claims to carry on a legitimate commercial business in identifying and seeking to register soon to be deleted domain names;
- The Respondent submits that it registered the Domain Name specifically to derive pay-per-click revenue from its generic qualities and not due to its use as a trademark by the Complainant;
-Furthermore, the Respondent’s commercial use of the web site commenced well in advance of the date that this Complaint was filed, namely May 1, 2009, and prior to receipt by the Respondent of the initial cease and desist letter dated April 22, 2009, sent by the Complainant;
-Although the Respondent submits that there is no demonstrable link between the Respondent and the Domain Name in question, the reality is that the domain name is not a personal name. The Domain Name is made up of common dictionary words from the English language, and is one of many domains using the words for similar services on the Internet. The Complainant has coexisted with many such domains in the past. It is simply justice that the Respondent be allowed to coexist in this arena.
-The Respondent is making fair use of the Domain name by incorporating it into a Parked Page and thereby providing Internet users with relevant information, in particular information relating to adult websites. It is also a legitimate commercial use of the Domain Name to generate revenue from pay-per-click advertisers. The Respondent is not using the Domain Name with the intent to mislead or divert consumers or to tarnish the Complainant’s mark.
-As the Respondent’s use of the Domain Name was in good faith, in furtherance of its business plan and objectives, and in association with the provision of services, the Respondent has a legitimate interest in the Domain Name. It is submitted therefore that the Complainant has not demonstrated that the Respondent is not acting within the requirements set forth under section 4(a) (iii) of the Policy
-The purpose of the Policy is to provide a forum where clear cases of bad faith registration of .com domain names can be dealt with expeditiously. The Policy is not intended to cover disputes between two parties with legitimate interests in the domain name. The Respondent respectfully submits that the Complainant has not demonstrated that a) the Respondent’s Domain Name is confusingly similar to a trademark of the Complainant in which the Complainant has rights; b) the Respondent has registered the Domain Name in bad faith; and c) the Respondent has no rights or legitimate interest in the Domain Name.
(1) the domain name registered by Respondent is confusingly similar to a trade 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 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 its rights in the MYFREECAMS.COM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,495,750 issued September 2, 2008, filed February 3, 2008). Complainant has rights in the mark that date back to the filing date under Policy ¶ 4(a)(i). See 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.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also asserts that it has obtained substantial secondary meaning in the MYFREECAMS.COM mark since its first use of the mark in commerce in March 2002. Complainant puts forward that since that time, it has become one of the most well-known Internet sites, with over 1,000,000 website members. Pursuant to the evidence provided, the Panel is of the opinion that Complainant has established sufficient secondary meaning in the mark and thus has shown common law rights in the mark dating back to March 2002 under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant asserts that the <wwwmyfreecams.com> domain name is confusingly similar to the MYFREECAMS.COM mark because the sole addition of the common prefix “www” represents a mere typographical error.
The Panel agrees and finds that such an addition is insignificant; the disputed domain name contains a modified version of Complainant’s mark which adds the prefix “www” without any punctuation between the commonly recognized “www” and Complainants mark, taking advantage of a typing error. Respondent’s domain name is therefore confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature).
While Respondent contends that the <wwwmyfreecams.com> domain name is in fact comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i)
The Panel reiterates that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant having made a prima facie case concerning Respondent’s lack of rights and legitimate interest, the burden now shifts to Respondent to show otherwise.
The Panel notes that the WHOIS information for the disputed domain name lists Respondent as “Forsyte Corporation.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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’s disputed domain name resolves to a website that displayed aggregated third-party click-through advertising for Complainant’s competitors and other third parties. The Panel finds Complainant’s assertions to be true and is of the opinion that Respondent has not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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)).
Additionally, Complainant asserts that Respondent has sought to manipulate the common typographical errors of unsuspecting Internet users seeking Complainant. The Panel agrees and finds that Respondent has engaged in this alleged “typosquatting,” which is evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
Complainant has therefore satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent
has led Internet users seeking Complainant’s business to the competitive
pay-per-click links on the resolving website. Respondent uses the disputed domain name to
advertise goods and services provided by Complainant’s competitors which
consequently disrupts Complainant’s business. Therefore, the Panel finds that
Respondent engaged in bad faith registration and use under Policy ¶
4(b)(iii). See David Hall Rare Coins v.
As well, the Panel finds that
Respondent uses a confusingly similar disputed domain name to commercially host
advertisements for Complainant’s competitors and therefore creates a likelihood
of confusion as to Complainant’s sponsorship and affiliation with the disputed
domain name and corresponding website, thus engaging in bad faith registration
and use under Policy ¶ 4(b)(iv). See
Finally, the Panel finds that Respondent has engaged in typosquatting, which in itself constitutes evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii) since the disputed domain name, as registered, is likely to ensnare those individuals forgetting to type the punctuation mark between the “www” and the rest of the web address. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).
For these reasons, Complainant has satisfied 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 <wwwmyfreecams.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist