Ancestry.com Operations, Inc. v. Dotzup.com
Inc.
Claim Number: FA1003001311543
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@ancestery.com,
postmaster@ancestery.org, and postmaster@ancestery.net. 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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
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