Doteasy Technology Inc. v. Scott Patterson
Claim Number: FA1106001392697
Complainant is Doteasy Technology Inc. (“Complainant”), represented by Jonathan Wong, Canada. Respondent is Scott Patterson (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doteasyhost.com>, registered with eNom, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 8, 2011.
On June 10, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <doteasyhost.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@doteasyhost.com. Also on June 16, 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.
A timely Response was received and determined to be complete on July 6, 2011.
On July 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the <doteasyhost.com> domain name be transferred from Respondent to Complainant.
A. Complainant
In its Amended Complaint, Complainant contends as follows:
- Respondent's <doteasyhost.com> domain name is virtually identical and confusingly similar to Complainant's DOTEASY mark because it contains this mark in its entirety, while adding the generic and descriptive term “host”.
- Respondent cannot establish a legitimate right to, or interest in the <doteasyhost.com> domain name. Complainant has not authorized Respondent to use any of its trademarks or the domain name. Respondent’s incorporation of Complainant’s mark in the disputed domain name infringes Complainant’s trademark rights. Respondent has registered and is using the <doteasyhost.com> domain name to infringe Complainant’s trademark rights and to trade off Complainant’s goodwill by using it as part of a phishing scam.
- On April 26, 2011, the anti-phishing firm PhishLabs sent an email to Complainant indicating that the <doteasyhost.com> domain name is being used as part of a phishing scam to phish for login information from Wachovia users. It is obvious that PhishLabs had erroneously sent the email to Complainant, thinking that Complainant is the owner of <doteasyhost.com>. Not only does this incident demonstrate that Respondent’s use of the domain name tarnishes Complainant’s mark, but it also demonstrates that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
- Respondent intends to trade on the fame of Complainant's mark and goodwill by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's domain name. This use of the disputed domain name cannot constitute a bona fide offering of goods and services.
- Respondent has registered and is using the domain name in bad faith with full knowledge of Complainant’s DOTEASY mark. Complainant is widely known as a provider of web hosting, email and domain name registration services. Respondent uses the <doteasyhost.com> domain name as part of a phishing scam to phish for login information from Wachovia users. This use constitutes bad faith registration and use.
- As of May 25, 2011, users visiting the <doteasyhost.com> domain name are automatically taken to a “The page cannot be found error” page. Such passive holding of the disputed domain name constitutes evidence of bad faith.
B. Respondent
In its Response, Respondent contends as follows:
- Respondent’s <doteasyhost.com> domain name is not identical to Complainant’s <doteasy.com> and is no more virtually identical than the <doteasy.com.au> or the <doteasy.co.za> domain names, involved in the web hosting business as is Complainant’s primary business. Another example would be the domain name <doteasycoupon.com>. Complainant does not own the above-mentioned domains. Complainant has no exclusive right to the generic word “dot” which is synonymous with the internet itself, as in “dot com”.
- Respondent does have the right and a legitimate interest in using the domain. Respondent is currently a student of Stark State College and will graduate in the fall of 2011 with a degree in programming. Respondent currently does web development on the side and plans to open his own web design business upon graduation. Respondent registered the domain name five months ago and his site(s) are still in early development. Respondent’s business plan is to focus primarily on web design and marketing and offer hosting services strictly to his clients if needed, not to the general public as is with the Complainant’s primary business. Annex 2a is provided as a preliminary stage of the site development. In fact the plan is to have the domain name <doteasyhost.com> point to Respondent’s primary development site. Therefore Respondent’s intentions are to provide a bona fide offering of goods and or services.
- The domain name was not registered and is not being used in bad faith. Respondent registered the domain name <doteasyhost.com> on February 13, 2011 from registrar namecheap.com. Only registration, no hosting services were purchased. Since that day, the registered domain name has been parked. Respondent has never offered the domain name <doteasyhost.com> for sale to Complainant or to any other individual or group.
- Respondent did conduct a preliminary trademark search for the term “Dot Easy Host” and the results showed that no person or group had registered this mark.
- This is the first complaint to ever be filed against the Respondent.
- In the complaint, Complainant falsely accuses Respondent of using the domain name <doteasyhost.com> in bad faith. Complainant states that Respondent used the disputed domain name in a phishing scam as claimed in Complainant’s Annex 8. If Complainant had done its due diligence and searched the “WhoIs” on the IP address 117.53.152.29, they would have seen that the offending domain name was in fact <doteasyhost.net>, see Annex 3b, Annex 3c, these servers are located in Malaysia. Not Respondent’s <doteasyhost.com>, which has never been live, with servers located in the U.S.
- Respondent believes Complainant is attempting a Reverse Domain Hijacking. The domain name <doteasyhost.com> was available and has been available since the Complainant registered the domain name <doteasy.com> on August 22, 1999. If Complainant felt that the domain name in dispute was so vital to its business, then why has Complainant not acted on it until now? In addition, Complainant has falsely accused Respondent with a made up accusation.
According to Webhosting Info, Complainant is listed fifth among Canadian providers of web hosting, with some 110,000 domain names (2011).
Complainant owns the following Canadian registered trademarks:
- DOTEASY, Reg. No. TMA637785, Reg. Date April 19, 2005, filed on August 28, 2003, covering internet domain registration and internet web hosting and email services, claimed as being used since May 1, 2000.
- DOTEASY.COM, Reg. No. TMA638905, Reg. Date May 3, 2005, filed on May 28, 2004, covering registration of domain names, hosting and designing website and dissemination of advertising for others via an electronic site, etc., claims as being used in Canada since May 1, 2000. The “.com” term is disclaimed.
Complainant also owns a U.S. federal trademark registration for DOTEASY.COM, Reg. No. 3049801, Reg. Date January 24, 2006, filed on November 22, 2004, covering computer services, namely managing and registering domain names, etc., designing, developing and hosting websites for others, etc. A first use/first use in commerce is clamed since May 1, 2000. The right to use the term “.com” apart from the mark as shown is disclaimed
Complainant also owns the <doteasy.com>, <doteasyblog.com>, <doteasyserver.com> and <doteasypromo.com> domain names.
The <doteasyhost.com> domain name was registered on February 13, 2011.
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."
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.
As shown with printouts taken from the Canadian and U.S. trademark databases, Complainant has trademark rights in the DOTEASY and DOT EASY.COM trademarks.
Respondent alleges that Complainant has no exclusive right to the generic word “dot” which is synonymous with the Internet, as in “dot com”. The Panel agrees with Respondent that the term “dot” is generic, but it also must remind Respondent that a trademark can be wholly composed of generic terms, while the resulting composite can be nonetheless sufficiently distinctive. This is exactly the case with Complainant’s marks. In fact, both the Canadian and the U.S. trademark offices accepted the “dot” and “easy” terms in the trademark registrations just mentioned. While these trademark registrations are not declared invalid by the competent authorities or courts, the Panel accepts them as compliant with Policy ¶ 4(a)(i).
The disputed domain name consists of the DOTEASY mark plus the “host” generic term and the gTLD “.com”. It is well established that the addition in a domain name of a generic term or a gTLD such as “.com” to a mark, is inapt to distinguish one identifier from the other. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the DOTEASY and DOTEASY.COM trademarks of Complainant.
Complainant contends that Respondent cannot establish a legitimate right to, or interest in the <doteasyhost.com> domain name; that Complainant has not authorized Respondent to use any of its trademarks or the domain name; that Respondent’s incorporation of Complainant’s mark in the disputed domain name infringes Complainant’s trademark rights, and that Respondent has registered and is using the <doteasyhost.com> domain name to infringe Complainant’s trademark rights and to trade off Complainant’s goodwill by using it as part of a phishing scam.
Respondent contends that he is currently a student of Stark State College who will graduate in the fall of 2011 with a degree in programming. He currently does web development on the side and plans to open his own web design business upon graduation. Respondent adds that he registered the disputed domain name five months ago and that his “site(s) are still in early development”. Respondent states, “My business plan is to focus primarily on web design and marketing and offer hosting services strictly to my clients if needed, not to the general public as is with the Complainants primary business [ …] In fact the plan is to have the domain name <doteasyhost.com> point to my primary development site. Therefore my intentions are to provide a bona fide offering of goods and or services.”
The Panel notes that as of today the disputed domain name does not resolve to any active website, and instead returns a “page not found” error.
In support of his alleged intention to provide primarily web design and offer hosting services just to clients if needed and not to the general public, Respondent submits a sample of a web page under the title of “.EASYHOST”. It is clear that Respondent has tried to create some illusion of difference between Complainant`s mark and this sample, by replacing in the title the term “DOT” by the “.” sign. However, the Panel believes that this minor change does not alter the overall impression of confusion with Complainant’s DOTEASY mark.
Also, Respondent says that he intends to provide hosting services to some clients if they so wish, but not to the general public (as does Complainant). Despite this sort of promise not to compete, the plan stated by Respondent means that both Respondent and Complainant would be providing the same service so that they would compete with each other under identical or confusingly similar names.
Respondent’s plan does not end here. He adds, “in fact the plan is to have the domain name <doteasyhost.com> point to Respondent’s primary development site”. In other words, the disputed domain name would support the web design and hosting business of Respondent, conducted on a different website, by redirecting Internet users presumably looking for Complainant`s mark and web hosting services to Respondent’s chosen website.
The Panel believes that Respondent’s plan is exactly the opposite of a bona fide offering of goods and services because it clearly intends to trade off the well known trademark of Complainant to promote web hosting and other services offered for profit by Respondent, in competition with Complainant, without any authorization from Complainant.
The Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name.
As to registration in bad faith, Complainant is well known in Canada as a provider of web hosting services offered under the DOTEASY mark. Thus, it would be highly unlikely that Respondent, residing in Ohio, United States of America, soon to graduate as a computer programmer, and planning to become a provider of services competing with Complainant, is unaware of Complainant and its DOTEASY mark. Also, Complainant owns, besides its Canadian registrations, a U.S. federal trademark registration for DOTEASY.COM, registered on January 24, 2006, that is several years before the disputed domain name was registered.
Respondent submits the negative result of his search for any “DOT EASY HOST” mark conducted on June 18, 2011on the TESS database of the USTPO. However, it appears that Respondent shaped the search so that the result had to contain all three search terms (DOT + EASY + HOST), thus excluding Complainant`s DOTEASY.COM trademark ab initio.
Also, Respondent does not say whether he conducted or not a rather obvious Google search for the “dot easy” or “dot easy host” search terms. Had Respondent conducted such a search; he would have found Complainant appearing in the first four places of the list, as did the Panel on July 26, 2011.
The Panel concludes that Respondent most likely was aware of Complainant and its DOTEASY mark when he registered the disputed domain name, i.e. the disputed domain name was registered in bad faith.
Until presently, the disputed domain name simply was parked. On July 26, 2011, the Panel tried to connect its browser to “www.doteasyhost.com” and the browser returned an error message. This does not mean that there is no future for the domain name. We have seen above that Respondent’s plan as to the future use of the disputed domain name consists of letting the disputed domain name point to Respondent’s business of web design, development and hosting conducted at another web location. Thus, Internet users looking for Complainant’s mark and web hosting services will be redirected to Respondent’s own “primary development site”, a website of commercial nature.
The Panel believes this is precisely the kind of abuse of a domain name described in Policy ¶ 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”), which is a circumstance of registration and use in bad faith.
Apparently, Respondent has not yet materialized his plan of parasitic use of the disputed domain name, but this does not mean that the element of use in bad faith is absent today. The Panel believes that in the circumstances of this case Respondent’s lack of any active use or inaction, added to the planned use as described, amount to passive use in bad faith, as described in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
In conclusion, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Complainant contends that Respondent is engaged in a phishing scam aimed at obtaining personal data from Wachovia customers, and supports this contention with an email sent by PhishLabs to Complainant. Respondent replies that Complainant’s accusation is baseless, and submits a WhoIs report showing Geo Information related to the IP Address 117.53.152.29 belonging to the host server.doteasyhost.net, located in Malaysia.
As the Panel has already made its finding of bad faith based on other grounds, it will not delve further into Complainant’s contention about phishing and Respondent’s reply thereto. In any case, the Panel’s finding on bad faith is completely independent from the phishing issue.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doteasyhost.com> domain name be TRANSFERRED from Respondent to Complainant.
Having regard to this decision, the Panel does not believe that the Complaint was made in bad faith. Therefore, Respondent’s request of a Panel’s declaration of reverse domain name hijacking is DENIED.
Roberto A. Bianchi, Panelist
Dated: July 26, 2011
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