Zero Point Ltd. v. Customer of IXWebhosting c/o Ecommerce.com, Inc.
Claim Number: FA1103001376165
Complainant is Zero Point Ltd. (“Complainant”), represented by Dickinson Wright, Washington D.C., USA. Respondent is Customer of IXWebhosting c/o Ecommerce.com, Inc. (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <godlikeproductions.info>, registered with Tucows Inc. (R139-LRMS).
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2011; the National Arbitration Forum received payment on March 7, 2011.
On March 4, 2011, Tucows Inc. (R139-LRMS) confirmed by e-mail to the National Arbitration Forum that the <godlikeproductions.info> domain name is registered with Tucows Inc. (R139-LRMS) and that Respondent is the current registrant of the name. Tucows Inc. (R139-LRMS) has verified that Respondent is bound by the Tucows Inc. (R139-LRMS) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2011 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@godlikeproductions.info. Also on March 10, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <godlikeproductions.info> domain name is identical to Complainant’s GODLIKE PRODUCTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <godlikeproductions.info> domain name.
3. Respondent registered and used the <godlikeproductions.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zero Point Ltd., uses its GODLIKE PRODUCTIONS mark in connection with an online forum, located at <godlikeproductions.com>, that allows computer users to discuss conspiracy theories and current events and also provides Internet chat rooms and podcasts. Complainant has two pending trademark applications for its GODLIKE PRODUCTIONS mark with the United States Patent and Trademark Office (“USPTO”) (Serial Nos. 85/256,568 and 85/256,929). Complainant states that it has used the mark since at least as early as December 31, 2004.
Respondent, Customer of IXWebhosting c/o Ecommerce.com, Inc., registered the disputed domain name on June 16, 2010. The disputed domain name resolves to a website that directly competes with Complainant’s online forum and Internet chat rooms.
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.
Complainant indicates that it does not yet own a trademark registration for its GODLIKE PRODUCTIONS mark. Complainant does, however, submit evidence that it has two pending trademark applications for the mark with the USPTO (Serial Nos. 85/256,568 and 85/256,929). Although a pending trademark application is generally not enough to establish rights in a mark pursuant to Policy ¶ 4(a)(i), Complainant may satisfy the section of the Policy by demonstrating common law rights in the mark through a showing of acquired secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts that it has been using its GODLIKE PRODUCTIONS mark since at least as early as December 31, 2004. Complainant indicates that it began hosting an online forum on the website resolving from its <godlikeproductions.com> domain name on that date. Complainant submits archival copies of its official website showing use of its GODLIKE PRODUCTIONS mark every year since 2004. Complainant asserts that it has spent a significant amount of time and effort promoting and supporting its GODLIKE PRODUCTIONS mark and website, and as a result, Complainant argues that its mark is widely associated with Complainant’s official website and the online forum services provided. Complainant submits copies of several articles and other media coverage that have referenced Complainant’s GODLIKE PRODUCTIONS mark and website. Complainant avers that all of the articles were published before Respondent’s registration of the disputed domain name. One of the articles submitted by Complainant indicates that over 15,000 people per day visited Complainant’s website in 2006 and posted an average of 3,000 items for discussion daily. Complainant adds that currently there are more than 20,000 posts on its website every day. The Panel finds that Complainant has submitted sufficient evidence that the public has come to associate Complainant’s GODLIKE PRODUCTIONS mark with the services offered by Complainant on its website and online forums. Therefore, the Panel finds that secondary meaning has been established such that Complainant can prove common law rights in its GODLIKE PRODUCTIONS mark under Policy ¶ 4(a)(i), dating back to December 31, 2004. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant asserts that Respondent’s <godlikeproductions.info> domain name is identical to Complainant’s GODLIKE PRODUCTIONS mark. The disputed domain name merely adds the generic top-level domain “.info” to Complainant’s entire mark, absent the space between the terms. Prior panels have concluded that, where a domain name merely eliminated the space between the terms of a mark and added a gTLD, the domain name could be considered identical to the complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel agrees with the findings of prior panels and concludes that Respondent’s <godlikeproductions.info> domain name is identical to Complainant’s GODLIKE PRODUCTIONS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first establish a prima facie case in support of its allegations before the burden of proof shifts to Respondent to submit evidence that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). While the Panel finds that Complainant has established its required prima facie case, Respondent has failed to uphold its burden and has not submitted any response to these proceedings. See 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.”). Although Respondent’s default would allow the Panel to infer that Respondent lacks any rights or legitimate interests in the disputed domain name, this Panel elects to consider the evidence in the record in order to determine Respondent’s rights or legitimate interests, if any, in the <godlikeproductions.info> domain name.
The WHOIS information for the disputed domain name indicates that the registrant is “Customer of IXWebhosting c/o Ecommerce.com, Inc.” There is no evidence in the record that would provide any indication that Respondent is commonly known by the disputed domain name. Therefore, the WHOIS information and the lack of evidence to the contrary, lead the Panel to conclude that Respondent cannot establish rights or legitimate interests in the disputed 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain name to display graphics and content, including online forums related to conspiracy theories, similar to the graphics and content included on Complainant’s official website, resolving from the <godlikeproductions.com> domain name. Complainant suggests that Respondent is clearly gaining commercially from the diversion of Internet users to Respondent’s site. The Panel finds that Respondent’s use of the identical disputed domain name to operate a website in direct competition with Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that registration of a disputed domain name identical to Complainant’s mark which Respondent registered and is using to host its own website that directly competes with Complainant, is clearly a disruption of Complainant’s business. Internet users who type the <godlikeproductions.info> domain name into a URL search bar and expect to be taken to Complainant’s official website, will instead find themselves at Respondent’s similar and competing website. Internet users may then utilize the services provided on Respondent’s website rather than those provided by Complainant under its GODLIKE PRODUCTIONS mark. The Panel finds this to be clear evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant argues that the <godlikeproductions.info> domain name was registered in bad faith and continues to be used in bad faith in order to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The disputed domain name incorporates Complainant’s entire mark, without alteration. Additionally, Complainant asserts that Respondent’s website contains similar “outer space” graphics as those displayed on Complainant’s official website. The Panel concludes that, as Respondent is likely profiting from its resolving website and the content contained therein, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <godlikeproductions.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 8, 2011
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