The Weather Underground, Inc. v. Domain Administrator / PortMedia
Claim Number: FA1203001433949
Complainant is The Weather Underground, Inc. (“Complainant”), represented by John Di Giacomo of Traverse Legal, PLC, Michigan, USA. Respondent is Domain Administrator / PortMedia (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <weatherudnerground.com>, <weayherunderground.com>, and <wundreground.com>, registered with Moniker Online Services, Llc.
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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2012; the National Arbitration Forum received payment on March 9, 2012.
On March 14, 2012 and March 26, 2012, Moniker Online Services, Llc confirmed by e-mail to the National Arbitration Forum that the <weatherudnerground.com>, <weayherunderground.com>, and <wundreground.com> domain names are registered with Moniker Online Services, Llc and that Respondent is the current registrant of the names. Moniker Online Services, Llc has verified that Respondent is bound by the Moniker Online Services, Llc 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 April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2012 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@weatherudnerground.com, postmaster@weayherunderground.com, and postmaster@wundreground.com. Also on April 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 24, 2012.
On April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that:
B. Respondent
Respondent consents to transfer the <weatherudnerground.com>, <weayherunderground.com>, and <wundreground.com> domain names.
Complainant is a Michigan Corporation and was one of the first organizations to provide users with an online weather service. In fact, Complainant has offered its services via its official web sites, www.wunderground.com, www.weatherunderground.com, and wund.com since 1995 and 1998, respectively.
Complainant’s WUNDERGROUND.COM and THE WEATHER UNDERGROUND marks (collectively “Complainant’s Marks”) are well and favorably known in their local market as well as throughout the world.
The WUNDERGROUND.COM was registered with the United States Patent and Trademark Office on February 29, 2000.
The WUNDERGROUND.COM mark was first used, including first use in commerce, on March 16, 1995. The distinctive mark pertains to “Computer services, namely providing on-line information services in the field of weather.”
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <weatherudnerground.com>, <weayherunderground.com>, and <wundreground.com> domain names to Complainant. However, after the initiation of this proceeding, Moniker Online Services, Llc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. In a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel could decide to forego the traditional UDRP analysis and order an immediate transfer of the <weatherudnerground.com>, <weayherunderground.com>, and <wundreground.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, the Panel understands that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel will analyze the case under the elements of the UDRP.
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 claims rights in the WUNDERGROUND.COM and THE WEATHER UNDERGROUND marks for the purposes of Policy ¶ 4(a)(i). Complainant has presented the Panel with evidence of its registration of the WUNDERGROUND.COM (Reg. No. 2,324,272 registered February 29, 2000) and THE WEATHER UNDERGROUND marks (Reg. No. 2,297,683 registered December 7, 1999) with the USPTO. Registration of a mark with the USPTO has previously been held to confer rights in the mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient to establish rights in the marks under Policy ¶ 4(a)(i), despite the fact that Complainant has not presented evidence of registration in the country in which Respondent operates. See 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 argues that the <weatherudnerground.com> and <weayherunderground.com> domain names are confusingly similar to its THE WEATHER UNDERGROUND mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that the <weatherudnerground.com> and <weayherunderground.com> domain names each omit the word “the” and the spaces between words in Complainant’s THE WEATHER UNDERGROUND mark, while including a small typo and affixing the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the transposition of two letters in a complainant’s mark, such is the case with the <weatherudnerground.com> domain name, is not sufficient to distinguish a disputed domain name under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Also, previous panels have held that the replacement of single letter in a complainant’s mark, as is the case with the <weayherunderground.com> domain name, does not distinguish a disputed domain name under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Finally, previous panels have determined that the omission of spaces between words in a Complainant’s mark, as well as the addition of a gTLD, does not distinguish a disputed domain name under Policy ¶ 4(a)(i). See 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)). In light of the analysis, the Panel finds that the <weatherudnerground.com> and <weayherunderground.com> domain names are confusingly similar to Complainant’s THE WEATHER UNDERGROUND mark for the purposes of Policy ¶ 4(a)(i).
Complainant also argues that the <wundreground.com> domain name is confusingly similar to its WUNDERGROUND.COM mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that the <wundreground.com> domain name also includes a small typo and affixes a gTLD to Complainant’s WUNDERGROUND.COM mark. Previous panels have found that the transposition of two letters in a complainant’s mark, such is the case with the <wundreground.com> domain names, is not sufficient to distinguish a disputed domain name under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel finds that the <wundreground.com> domain name is confusingly similar to Complainant’s WUNDERGROUND.COM mark for the purposes of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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. If Complainant satisfies its burden, then the burden 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 <weatherudnerground.com>, <weayherunderground.com>, and <wundreground.com> domain names within the meaning of Policy ¶ 4(c)(ii). Complainant claims to have no pre-existing relationship with Respondent and to have never authorized Respondent’s use of its marks in the disputed domain names. The WHOIS information identifies the domain name registrant as “Domain Administrator / PortMedia,” which bears no similarity to the <weatherudnerground.com>, <weayherunderground.com>, or <wundreground.com> domain names, providing evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(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). Additionally, the Respondent did not address this issue in his Response, leaving the record devoid of any evidence suggesting that Respondent is commonly known by any of the disputed domains. Upon taking these findings into account, the Panel concludes that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).
Complainant further alleges that Respondent lacks rights or legitimate interests in the <weatherudnerground.com>, <weayherunderground.com>, or <wundreground.com> domain names because Respondent’s use of the disputed domain names can be considered 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). Respondent uses the disputed domain names to resolve to a website featuring generic links to third-party websites, some of which compete with Complainant’s business. Previous panels have refused to recognize this type of use as satisfying Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). On this basis, the Panel finds that Respondent’s use of the disputed domain names can be considered 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).
Complainant argues that Respondent’s registration of the <wundreground.com> domain name constitutes typosquatting, providing further evidence of Respondent’s failure to use the <wundreground.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that the <wundreground.com> domain name transposes the letters “e” and “r” in Complainant’s WUNDERGROUND.COM mark. The Panel construes Respondent’s registration of the domain name as typosquatting activity, which is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Complainant contends that Respondent’s provision of links to competing services on its websites housed at the disputed domain names evidences bad faith registration and use under Policy ¶ 4(b)(iv) as well. Complainant further argues that Respondent’s operation of confusingly similar domain names demonstrates its intent to create confusion as to Complainant’s endorsement of, or affiliation with, Respondent’s websites. The Panel assumes that Respondent profits from the operation of its websites, likely through the collection of click-through revenues. The Panel also assumes, therefore, that Respondent’s use of confusingly similar domain names is part of a plan to use Complainant’s goodwill to draw traffic to Respondent’s sites, where it benefits by generating a commercial gain. Past panels have found bad faith in this same situation. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); 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).”). The Panel finds that Respondent’s registration and use of the disputed domain names constitute bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s typosquatting activity is evidence of bad faith under Policy ¶ 4(a)(iii). The Panel finds bad faith registration and use of the <wundreground.com> domain name on this basis as well. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”).
Complainant also contends that, in light of the fame and notoriety of Complainant's THE WEATHER UNDERGROUND and WUNDERGROUND.COM marks, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the marks. The Panel finds that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <weatherudnerground.com>, <weayherunderground.com>, <wundreground.com> domain names be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: May 09, 2012
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