Ancestry.com Operations, Inc. v. Dotzup.com Inc.
Claim Number: FA1003001311543
Complainant is Ancestry.com Operations, Inc. (“Complainant”), represented by Alexis Arena, Pennsylvania, USA. Respondent is Dotzup.com Inc. (“Respondent”), represented by Gregory S. Johnson, of Paine Hamblen LLP, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ancestery.com>, <ancestery.org>, and <ancestery.net>, registered with Directnic, Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
On March 8, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <ancestery.com>, <ancestery.org>, and <ancestery.net> domain names are registered with Directnic, Ltd and that the Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 March 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org. Also on March 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 26, 2010.
Complainant’s Additional Submission was received on March 31, 2010 and determined to be in compliance with the Forum’s Supplemental Rule 7.
On April 6, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends that Respondent registered the domain names <ancestery.com>, <ancestery.org> and <ancestery.net> and that those names are confusingly similar and nearly identical to Complainant’s registered trademarks ANCESTRY and ANCESTRY.COM. Complainant further contends that Respondent has no rights or legitimate interests in the registered domains and that Respondent uses and registered those domains in bad faith. Complainant also asserts that Respondent’s disputed domains resolve to a website(s) that provides links to third-party competitors in the genealogy business.
Respondent contends that Complainant’s request for relief should be denied because Complainant “apparently has no rights in the alleged marks.” Assuming Complainant does have rights in the marks ANCESTRY and ANCESTRY.COM those marks are generic. Respondent also contends “the term “Ancestry” is merely descriptive and that Complainant has failed to demonstrate evidence of secondary meaning and that Complainant has “not fulfilled the onus on it to demonstrate acquired distinctiveness.” Respondent states that it “has a legitimate interest in its ANCESTERY domains” and that there is no evidence that the names were acquired for any wrongful purpose. Respondent also asserts that its domain registration “is a fair use of a generic term that was available for registration in the form of the subject domain without disparagement of, or impact upon, Complainant’s trademark rights”. Respondent further raises a host of contentions focused upon alleged inconsistencies in the corporate history of the Complainant as support for claiming that Complainant should be denied the requested relief. Finally Respondent contends that Complainant is simply harassing Respondent and should be found liable for reverse domain hijacking.
C. Additional Submissions
Complainant’s additional submission contended that Respondent disregarded Complainant’s ownership of the mark and confused corporate name changes with trademark assignments. Complainant also contended that due to the registration of its mark it was not required to submit evidence of acquired distinctiveness and secondary meaning. Complainant further asserted that Respondent failed to adequately distinguish its domains from Complainant’s trademark and that Respondent wrongfully attempted to assert the doctrine of laches. Complainant claimed that Respondent ignored its burden to show it was commonly known by the mark or was legitimately using the disputed domains and that Respondent intentionally misled the Panel and also failed to rebut the presumption of bad faith.
Complainant is the US Company Ancestry.com Operations, Inc. or more commonly known as Ancestry.com which is billed as the world’s leading online collection of family history resources. The Complainant commenced its use of the mark ANCESTRY for genealogical services in 1983 and was issued a US federal trademark registration, Reg. No. 1,577,711 for the mark on January 16, 1990. The Complainant registered the domain name <ancestry.com> in 1995 and began using the domain in connection with its genealogical services. Complainant received a US federal trademark registration, Reg. No. 3,568,993 on February 3, 2009 for the mark ANCESTRY.COM. In addition to the aforementioned marks Complainant owns a number of trademarks registered domestically and internationally for its business and genealogical services.
Respondent is indicated as an entity known as Dotzup.com, Inc. Respondent specifically states it “has rights and legitimate interests in <ancestery.com>” indicating that it registered its domain name on May 27, 1999 and that at such time it was unclear to the Respondent “if domain name could constitute a trademark and the UDRP was in its in infancy.” Respondent states that it “enjoyed quiet possession of its domain names and has been commonly known by its domain names, for over a decade.” Respondent fails to indicate exactly what use, if any, was made of the domain names during the time between its registration and its contact with the Complainant that predicated the UDRP. Respondent also fails to specifically point out the circumstances in which it became commonly known by the disputed domains or provide evidence that it is currently commonly known by the names despite the registrant information indicating Respondent to be Dotzup.com, Inc. Respondent suggests that based on prior domain name decisions and the facts in the instant proceeding “the Panel should find that during the past 11 years, Respondent has built legitimate rights in its domain names and that its domain names were not registered or used in bad faith and as a result, the complaint should be denied.” Respondent does seek to defend the viability of click through web sites and through its pleadings and exhibits indicates that it has operated at some point in time a site or sites related to genealogy.
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.
The Complainant provided evidence of the registration of its ANCESTRY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,577,711 issued Jan. 16, 1990). The Panel finds Complainant’s registration is sufficient to confer Complainant rights in its ANCESTRY mark 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 Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Complainant’s Additional Submissions and accompanying exhibits further establish its documented history with the USPTO as assignee of the rights in the mark dating back to at least the registration issuance date. See Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
The <ancestery.com>, <ancestery.org>, and <ancestery.net> domain names are confusingly similar to Complainant’s ANCESTRY mark. Each of the disputed domain names merely includes Complainant’s mark with the addition of an extraneous letter “e,” and the addition of a generic top-level domain (gTLD). Neither of these alterations to Complainant’s mark sufficiently differentiates Respondent’s disputed domain names from Complainant’s mark. Therefore the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Complainant has established this element.
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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);
Complainant contends that Respondent is not commonly known by the disputed domain names and thus has no rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). The WHOIS information for each of the disputed domain names lists the registrant as “Dotzup.com Inc.,” which is evidence that Respondent is not commonly known by the disputed domain names. The Panel finds that the Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends Respondent’s disputed domain names resolve to a
website providing links to third-party websites, some of which are
Complainant’s direct competitors in the genealogy industry. The Panel finds Respondent’s use of the
disputed domain names is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain names pursuant
to Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
Complainant asserts that Respondent’s disputed domain names intentionally contain a common typographical error in Complainant’s mark meant to mislead those searching for Complainant’s website to be directed to Respondent’s website for purposes of enhancing Respondent’s traffic and assisting Complainant’s competitors. The Panel finds this practice constitutes typosquatting which is evidence Respondent lacks rights and legitimate interests in the disputed domain names 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 LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Respondent’s argument that Complainant’s mark is descriptive and lacks distinctiveness is thwarted by the presence of Complainant’s numerous registrations. A US federal trademark registration raises a presumption of ownership and exclusivity in the mark holder premised on the distinctiveness of the mark. The registration serves as constructive notice of the mark holder’s right on a national basis from the time of registration and the registration also indicates the claimed date of first use for the mark.
While Respondent’s assertion that it did not know of Complainant’s rights in the ANCESTRY mark when it registered the disputed domains may be true it is legally inexcusable. Once proof of registration is established a mark holder need provide no further proof of distinctiveness as the registration speaks for itself. Marks that have been continuously registered for more than five years may also achieve incontestable status which confers the benefit of eliminating challenges premised on descriptiveness. While one can argue that a trademark was improvidently granted or that it has been inadequately policed leading to a loss of rights on grounds such as the mark becoming generic such arguments carry a heavy burden of proof. Respondent has not carried that burden as no support has been provided for its assertions. While Respondent is correct that Complainant does not have a monopoly on the use of the word “ancestry” on the internet, Respondent’s registrations do not fall within the ambit of fair use since the disputed domain names do not contain that word nor are they being used in a descriptive, nominative or comparative manner.
The Complainant has established this element.
The Panel finds Respondent’s use of confusingly similar domain names to attract Internet users seeking Complainant’s services and then diverting them to third-party competing websites is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel further concludes that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain names, and as such the Panel finds Respondent’s typosquatting is evidence in and of itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Respondent’s argument regarding laches has been considered in the context of Respondent’s suggestion that the time period of 11 years be considered as a time in which Respondent’s rights and interests in the disputed domains were developed. However the doctrine of laches does not apply as a defense in domain name dispute proceedings. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”). Additionally, merely holding a registered domain name for an extended period of time, without more, is insufficient evidence that protectable rights and interests in the domain name have been established. Complainant indicated that it only recently became aware of Respondent’s domain names and Respondent failed to indicate uses of the domain names while they were held that would put Complainant or others on notice that Respondent held rights in the disputed domains. Mere registration and holding of domains confers no trademark rights in the domain names and no corresponding constructive notice inures to the benefit of the registrant. The Respondent has also failed to show that reverse domain hijacking is present.
The Complainant has established this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that the relief requested by the Complainant shall be GRANTED.
Accordingly, it is Ordered that the <ancestery.com>, <ancestery.org>, and <ancestery.net> domain names be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Panelist
Dated: April 20, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum