Demand Media, Inc. v. A. K. M. Rakibul Islam
Claim Number: FA1105001391189
Complainant is Demand Media, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is A. K. M. Rakibul Islam (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ehowtravel.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 31, 2011.
On June 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ehowtravel.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 June 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@ehowtravel.com. Also on June 2, 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 June 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <ehowtravel.com> domain name is confusingly similar to Complainant’s EHOW mark.
2. Respondent does not have any rights or legitimate interests in the <ehowtravel.com> domain name.
3. Respondent registered and used the <ehowtravel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Demand Media, Inc., owns the EHOW mark. Complainant uses its mark in connection with its distribution, research, sharing, and discussion services for instructional solutions for tasks and projects, including travel. Complainant has registered the EHOW mark with federal trademark authorities including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,828,621 issued August 18, 2009).
Respondent, A. K. M. Rakibul Islam, created the <ehowtravel.com> domain name on July 21, 2010. The disputed domain name resolves to a website which redirects Internet users to a commercial website which contains advertising for various travel services.
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 contends that it has established rights in the EHOW mark through federal trademark registration. Panels have found that registration with trademark authorities such as the USPTO is sufficient for a complainant to establish rights in a mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Additionally, a complainant need not have registered a mark in the country the respondent resides or conducts business so long as the complainant can establish trademark rights in some jurisdiction. Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant has provided the Panel evidence that it has registered its EHOW mark with the USPTO (e.g., Reg. No. 3,828,621 issued August 18, 2009). Therefore, the Panel finds that Complainant has established rights in the EHOW mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that the disputed domain name is confusingly similar to its EHOW mark. The <ehowtravel.com> domain name fully incorporates Complainant’s mark. The disputed domain name has the addition of the generic top-level domain (“gTLD”) “.com” and the descriptive term “travel.” Panels have found that these changes fail to differentiate a domain name from a mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Because Respondent does nothing more than to add a descriptive term and a gTLD, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent lacks rights and legitimate interests in the <ehowtravel.com> domain name. Once a complainant makes a prima facie case in support of its claims, the burden shifts to the respondent to prove that it is untrue and that the respondent does possess rights or legitimate interests in the domain name. However, when a respondent has failed to respond to a complaint, the presumption is that the respondent lacks rights and legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable”). The Panel finds that Complainant has made a prima facie case and will review the record to determine if there is any evidence to suggest that Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <ehowtravel.com> domain name. When conducting a Policy ¶ 4(c)(ii) analysis, the WHOIS information for a respondent is illustrative of whether the respondent is commonly known by a disputed domain name. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Complainant did not give Respondent permission to use the EHOW mark in any capacity. Additionally, Respondent’s WHOIS information does not provide evidence that there is any connection between Respondent and the <ehowtravel.com> domain name beyond the registration of the domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent’s domain name resolves to a website which advertises various travel services. Presumably, Respondent receives compensation for these advertisements. The use of a confusingly similar domain name for commercial gain has been found to be outside the scope of the Policy ¶¶ 4(c)(i) and 4(c)(iii) protected bona fide offering of goods and services and legitimate noncommercial or fair uses of a domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also 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)”). Due to Respondent’s purpose of using a confusingly similar domain name in order to profit from mistakes and confusion by Internet users, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name resolves to a web page advertising travel services. Complainant alleges that some of its instructional services are travel related. Presumably, some of the instructional services on Complainant’s website are travel-related. As such, the services provided by Respondent compete with the services provided by Complainant, making them competitors, which inevitably disrupts Complainant’s business. The use of a confusingly similar domain name in a way which intentionally disrupts a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii)”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii)”). The Panel finds that Respondent’s registration and use of the confusingly similar <ehowtravel.com> domain name to redirect Internet traffic to various travel services, intentionally disrupting Complainant’s business, demonstrates Policy ¶ 4(b)(iii) bad faith registration and use of a domain name.
Complainant contends that Respondent registered and used the disputed domain name in bad faith because of the attraction for commercial gain of using a confusingly similar domain name. Panels have found that the use of a domain name that is confusingly similar to a complainant’s mark so as to instill confusion in Internet users as to the affiliation of the disputed domain name to the complainant for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv)”). Respondent likely receives monetary compensation for each Internet user that visits the travel services sites that the disputed domain name advertises. Respondent’s registration and use of a confusingly similar domain name, knowing that greater Internet traffic volume would garner a larger profit, was surely done with the intent to confuse Internet users of Respondent’s affiliation with or sponsorship by Complainant. As such, the Panel finds that Respondent’s registration and use of the disputed domain name was done in bad faith according to Policy ¶ 4(b)(iv).
The Panel finds that 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 <ehowtravel.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 28, 2011
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