WOOT, Inc. v. Daeix Inc.
Claim Number: FA1003001312536
PARTIES
Complainant is WOOT, Inc. (“Complainant”), represented by Linda M. Novak, of Fish & Richardson P.C., Texas, USA. Respondent is Daeix Inc. (“Respondent”), represented by Ajay Pillai, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wooot.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hon. Nelson A Diaz (ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 10, 2010.
On March 10, 2010, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <wooot.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name.
Network Solutions, Inc. has verified that Respondent is bound by the
Network Solutions, 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 March 15, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 5,
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@wooot.com Also on March 15, 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 April
5, 2010.
Complainant’s Additional Submission was received on April 6, 2010 in
compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on April 7, 2010 in
compliance with Supplemental Rule 7.
On April 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Nelson A Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant WOOT,
Inc., a Texas corporation (hereinafter, “Complainant,” “Woot, Inc.” or “Woot”),
is the owner of the U.S. Trademark. Complainant Woot uses its WOOT Mark in connection
with its retail store services featuring electronic items and other items, as
more fully described in Woot’s U.S. Registrations 3,012,788 and 3,397,587. Woot has used its WOOT Mark throughout the
United States since at least as early as July 13, 2004. Woot, Inc. also owns a registration for the
domain name woot.com and has so held
this domain name registration since at least as early as January 12, 2000, by
itself or through its predecessor in interest. The Subject Domain Name
is confusingly similar to Complainant Woot’s registered mark “WOOT” as set
forth more fully herein. Because
Complainant Woot has trademark registrations for its WOOT Mark that issued
prior to registration of the Subject Domain Name by Respondent, Respondent is
deemed to have known of Complainant’s WOOT Mark. Respondent
has no rights or legitimate interests in the Subject Domain Name because: (i) Complainant Woot has not authorized
Respondent to use Complainant’s WOOT Mark; (ii) Respondent (as an individual,
business, or other organization) has not been commonly known by the Subject
Domain Name; and (iii), Respondent is not making legitimate noncommercial or
fair use of the Subject Domain Name. Further, Respondent presumably receives
referral fees from its click-through site.
Receipt of such fees that are based on the
unauthorized use of Complainant’s Mark are evidence of bad faith registration
and misuse.
B. Respondent
Respondent has filed this mark for valid and
legitimate business that is completely different than the Claimant. Respondent
intends to operate this business both on mobile phones (through SMS) and on the
web. The claim that WOOOT is a mis-spelling of WOOT while plausible is
overreaching. If the claim is that mis-spelling by addition, subtraction or
modification of one, two or three characters in woot then the Claimant could
asserts rights to several thousands of domains. The respondent is setting up a
legitimate business operation that in no way infringes on the rights of the
Claimants as per their registered marks and therefore does not need the Claimants
permission to operate the Subject domain. The Respondent has filed for
trademarks under the text “WOOOT” that is distinct from the Claimants.
C. Additional Submissions
The submission of Respondents is that the
Complainants arguments in its letter written by its
representative P. Weston Musselman Jr. makes does not substantiate its Claims.
And the submission of the complainant is that Wooot.com site respondent, through its authorized
representative Mr. Ajay Pillai, indicates that Respondent plans to operate a
business on mobile phones and the Internet that is "intended for merchants
to manage their accounts" This
"intention" is negated by the fact that Respondent is already operating
a website that generates interest and business by unlawfully attracting
visitors through the unauthorized use of Complainant's registered and common
law trademarks.
FINDINGS
The Respondent has violated ICANN Policy ¶ 4(a)(i) “confusing
similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy
¶ 4(a)(iii) “bad faith registration and use.”
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.
Complainant has provided evidence of the registration of its WOOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,012,788 issued November 8, 2005) in connection with retails store services for electrical items. The Panel finds Complainant’s registration of its WOOT mark is sufficient to establish Complainant’s rights 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 disputed domain name is confusingly similar to Complainant’s WOOT mark. The disputed domain name merely adds an additional “o” to the entirety of Complainant’s mark along with adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). The Panel finds Respondent’s <wooot.com> domain name is confusingly similar to Complainant’s WOOT mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under 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 Panel finds that Complainant has made a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and 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); 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. Complainant has satisfied its burden, the
burden then shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the
disputed domain name. The WHOIS
information lists the registrant as “Daeix Inc.” The Panel finds
Respondent is not commonly known by the disputed domain name pursuant to 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 contends that Respondent is using the disputed domain name to display links to commercial websites, some of which sell products which directly compete with Complainant, from which Respondent presumably receives referral fees. The Panel finds that Respondent’s use of the confusingly similar domain name is not 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant contends that Respondent, by using the disputed domain name
to display links to Complainant’s competitors, is disrupting Complainant’s
business. The Panel finds that
Respondent’s use of the confusingly similar disputed domain name to operate a
website featuring links to Complainant’s competitors, constitutes a disruption
of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Tesco Pers.
Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a
confusingly similar domain name to attract Internet users to a directory
website containing commercial links to the websites of a complainant’s
competitors represents bad faith registration and use under Policy ¶
4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Complainant contends that Respondent presumably receives referral fees
by displaying links to commercial websites, some of which compete with
Complainant’s business. The Panel finds
that Respondent’s use of the disputed domain name to profit from the receipt of
referral fees is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See
Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”);
see also 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).
Although Respondent argues it has not engaged in bad faith because of parking services, the Panel notes that Respondent has control by allowing parking services to be used. The Panel finds that a parked site is evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”); see also St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wooot.com>
domain name be CANCELLED.
Hon Nelson A Diaz (ret.), Panelist
Dated: April 23, 2010
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