Designs Around You, Inc. v. Dmitry Bolk
Claim Number: FA1109001408759
Complainant is Designs Around You, Inc. (“Complainant”), represented by Kevin Keener of Keener, McPhail, Salles, LLC, Illinois, USA. Respondent is Dmitry Bolk (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <designaroundyou.com>, registered with GoDaddy.com, Inc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <designaroundyou.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 September 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@designaroundyou.com. Also on September 26, 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 October 17, 2011.
On October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant asserts that:
· It owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its DAY DESIGNS AROUND YOU design mark (Reg. No. 2,522,019 registered December 25, 2001).
· It owns common law rights in the DESIGNS AROUND YOU mark.
· The Respondent is not using the domain name as a company name and is not commonly known by the domain name.
· The Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use as the Respondent’s resolving website contains statements that it may be offering competing services, as well as third-party links via Google AdSense and AdChoice advertisements.
· The Respondent profits from such advertisements through its use of pay-per-click links.
· The disputed domain name represents a misspelled version of Complainant’s mark, which represents evidence that the Respondent has engaged in typosquatting.
· The Respondent is using the domain name to potentially compete with Complainant.
B. Respondent
By its Response, the Respondent contends that:
· Even if the disputed domain name is similar to the trademark used by the Complainant, Respondent always used the name of the domain in one word and never as three separate words as on the Complainant’s trademark.
· Area of business reflected in the Respondent’s website is completely different from the Complainant’s area of business. The web site under the disputed domain name resolves is an internet directory of the businesses operating in the interior design area and collection of the articles discussing various home design and home improvement aspects.
· The Respondent never offered or had an intention to offer graphic design services to the Respondent’s site visitors because, as it was stated in the Complaint that the site primarily contains references to interior design services.
· The Respondent never offered or had an intention to offer to sell domain in dispute to any one, included Complainant itself or Complainant competitors.
· The Respondent did not register the domain name in dispute, for the purpose of disrupting the business of Complainant, since the Complainant and the Respondent are not operating in the same business area.
· At the time of registration, domain name was available and Respondent wasn’t aware of existence of the Complainant’s company.
· The Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark.
· The Respondent’s web site design is completely different from the Complainant’s one and focus on interior design questions and trends and not Graphic and web design as specified in the Complainant’s mark registration.
· The Respondent has not and never had an intention to “typosquatted” on Complainant’s trademark, even though the domain name in dispute has a similarity with the Complainant’s trade.
· The Complainant’s web site does not attract a lot of internet traffic. Based on various online sites that provide this type of information Complainant’s web site attracts in average - 500 unique visitors per month with 13950 monthly page views. Information could be found at <siteanalytics.compete.com/designsaroundyou.com/ >
· Even if Respondent would have an intention to “typosquat” on Complainant’s trademark, it would be very hard for Respondent to receive any financial gain due to the low internet traffic to and popularity of the Complainant’s website.
· The Respondent has utilized private registration offered by Goddady.com, to eliminate or reduce number of junk e-mails or calls, usually received when the full address is provided by the registrant, which is not an unusual practice and a lot of small businesses and private registrants utilize this approach.
· The fact that the full Respondent’s contact information became available, after the complaint was filled, proves that domain has not been registered and used in bad faith.
The Complainant is the holder of a USPTO registered design trademark which displays prominently in the foreground the words “DESIGNS AROUND YOU”. The Complainant seems also to have obtained common law trademark rights in the “DESIGNS AROUND YOU” mark. Under the registered design mark and the common law mark, the Complainant seems to offer only for “computer services, namely creating an[d] maintaining web sites for others, designing and implementing web sites for others, commercial art design, graphic art design, and desktop publishing”. The Respondent is using the disputed domain name which is similar with the Complainant’s trademarks as internet directory of the businesses operating in the interior design area and collection of the articles discussing various home design and home improvement aspects.
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.
Complainant is the holder of a trademark registration with the United States Patent and Trademark Office ("USPTO") for its DAY DESIGNS AROUND YOU design mark (Reg. No. 2,522,019 registered December 25, 2001). The mark is a logo showing the letters “D.A.Y.” in the background and the words “DESIGNS AROUND YOU” are displayed prominently in the foreground. The trademark was registered for “computer services, namely creating an[d] maintaining web sites for others, designing and implementing web sites for others, commercial art design, graphic art design, and desktop publishing”.
The Panel considers that the USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), regardless of Respondent’s location, and regardless of whether the mark contains a design element within it. See 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.”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”).
Complainant further contends that it owns common law rights in the DESIGNS AROUND YOU mark for the same “computer services, namely creating an[d] maintaining web sites for others, designing and implementing web sites for others, commercial art design, graphic art design, and desktop publishing”, as it incorporated under that name in the state of Wisconsin, USA on October 2, 1995. Further, Complainant notes that it registered its <designsaroundyou.com> domain name on September 29, 1997. Complainant alleges that it has continuously used this mark since 1995. It is obvious that the Complainant is using DESIGNS AROUND YOU as identifier and thus serving the purpose of a trade mark. Therefore, the Panel finds that Complainant has established rights in the DESIGNS AROUND YOU mark under Policy ¶ 4(a)(i). See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant also asserts that the disputed domain name is confusingly similar to its DESIGNS AROUND YOU mark and DAY DESIGNS AROUND YOU design mark. Complainant notes that the domain name merely omits the letter “s,” and the spaces between the terms of its mark, while adding the generic top-level domain (“gTLD”) “.com.” Such changes to Complainant’s mark within the domain name are not sufficient to remove the domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Bond & Co. Jewelers, Inc. v. Tex. 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)).
Therefore, the Panel finds that the Complainant satisfied the requirements of Policy ¶ 4(a)(i)).
The Complainant asserts that Respondent “is not using the domain name as a company name and is not commonly known by the domain name.” The Panel notes that the WHOIS information for the <designaroundyou.com> domain name identifies “Dmitry Bolk” as the registrant of the name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based upon the WHOIS information and contentions of Complainant. 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 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).
Further, Complainant contends that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent’s resolving website contains statements that it may be offering competing services, as well as third-party links via Google AdSense and AdChoice advertisements. Complainant argues that Respondent profits from such advertisements through its use of pay-per-click links, which cannot represent bona fide offering of goods.
Respondent alleges that it is making a fair use of the domain name without the intention of diverting consumers from Complainant’s website. Respondent contends that its area of business is completely different from that of the Complainant. Respondent contends that the “website is an internet directory of the businesses operating in the interior design area and collection of the articles discussing various home design and home improvement aspects.”
The Panel notes that Complainant’s screen shot evidence only show links to home improvement and home interior design companies, whereas Complainant’s mark is used for “computer services, namely creating an[d] maintaining web sites for others, designing and implementing web sites for others, commercial art design, graphic art design, and desktop publishing.” See Complainant’s Exhibit A (USPTO Registration Certificate).
As mentioned in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the Pay Per Click links could be considered
permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase).
In this case, there is no doubt that design around you may be considered descriptive for businesses operating in the interior design area and collection of the articles discussing various home design and home improvement aspects, as it is the one operated by the Respondent . Moreover, according to the information indicated by the Respondent to be found at <siteanalytics.compete.com/designsaroundyou.com/>, the Complainant’s website does not seem to attract a lot of internet traffic, while the Respondent’s one seems to attract much higher traffic is an indication for the Panel that the use of the disputed domain name does not imply any capitalization on the Complainant’s trademarks value.
Under the balance of probabilities, the Panel may find that Respondent has successfully rebutted Complainant’s assertions, and has therefore established that it has rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (finding that the respondent’s use of a disputed domain name was bona fide under Policy ¶ 4(c)(i) where the website only displayed links to jewelry products and the complainant used its mark to sell beverage products, including beer).
Therefore, the Panel concludes that the Complainant has not satisfied Policy ¶ 4(a)(ii). Concluding in this sense, the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
DECISION
Having established that the Complainant has not satisfied all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <designaroundyou.com> domain name REMAIN WITH Respondent.
Beatrice Onica Jarka Panelist
Dated: November 7, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page