Hosting.com, Inc. v. Paul Mitchell
Claim Number: FA1004001320688
Complainant is Hosting.com,
Inc., represented by David Snead,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hostmysiteonline.com>, registered with Wild West Domains, 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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010.
On April 22, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <hostmysiteonline.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2010 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 email@example.com. Also on April 29, 2010, 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 May 17, 2010.
On May 26, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
As the complaint reveals, the Complainant is
stated to be the owner of the combination trademark “HostMySite.com” (“Mark”)
for, among other things, web hosting services.
It is the contention of the Complainant that it has continuously used
the Mark in connection with web hosting services since 1998. The Mark is stated
to be registered by the US Patent and Trademark Office (“USPTO”) vide Registration No.3260930 issued July 10, 2007. In this
regard, the Complainant has attached a copy of the trademark registration
certificate as Attachment-B to the present complaint. It is further the
contention of the Complainant that the phrase “hostmysite.com” is well known
and established in the
· It is also the contention of the Complainant that it has created substantial goodwill in the Phrase and the Mark. The Complainant is stated to be well known as a recognized and trusted provider of Internet infrastructure products including web hosting, email services, colocation and cloud computing services and has maintained an Internet presence for this purpose since 1998. Complainant’s website uses the Phrase as its domain name.
· It is the contention of the Complainant that it has been doing business under the name/mark “Hostmysite.com” since 1998, and is stated to have maintained a website using the name “Hostmysite.com” and that the Mark has been registered with USPTO since July 10, 2007. It is the claim of the Complainant that neither Respondent’s Domain Name nor any mark similar to Respondent’s Domain Name has been registered with the USPTO. It has been alleged by the Complainant in its complaint that based on information from the Internet Archive, the Respondent has maintained a website at the Domain Name since January of 2008 and, therefore, their domain name registration predates Respondent’s Domain Name use by over ten years.
· It is the claim of the Complainant that it has devoted substantial capital and corporate resources to associate the Mark with its services and increase public awareness of each. Complainant is stated to have spent more than $ 25,000,000 during the last more than ten year period to promote the Mark.
· According to the Complainant, the Respondent has established a website associated with the Domain Name on or about December 12, 2009. Complainant is stated to have drawn the attention of the Respondent about this by its letter, on or about December 13, 2009 (Exhibit E). The Website of respondent purportedly offered shared web hosting services to the general public; however, a substantial portion of the Website’s home page is stated to have been made of click-through advertisements for companies other than Respondent’s. These advertisements are for competitors of Complainant who also offer web hosting. Further, the aspects of the Website that are traditional hallmarks of an Internet business seeking customers, such as tutorials, FAQ, and product descriptions, are either blank or virtually non-existent. Even when logged in, neither the “Knowledgebase” or “Downloads” section of the customer portal contain any information. Areas of the Website that should provide access to users, such as passwords provided during sign-up, cannot be successfully used to gain access to features like web mail or the control panel.
· It is the contention of the Complainant that the Respondent has used the Domain Name in question in a manner which is identical and confusingly similar to Complainant’s Trademark - the only difference between Complainant’s and Respondent’s use of the Mark is that the Domain Name includes the word “ONLINE.” The Complainant has relied upon the following decisions of WIPO and/or this Forum (NAF) : -
(i) Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001);
(ii) Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000);
(iii) Complexions Rx, Inc. v. Hogan, D2002-0484l (WIPO July 19, 2002)
Int’l, Inc. v.
(v) Nokia Corp. v. Lakhani, D2000-0833 (WIPO Oct. 19, 2000);
(vi) XO Communications Inc. v. XO Network Operations Center Inc., FA 150786 (Nat. Arb. Forum Apr. 28, 2003) ;
(vii) Vaga-lume Midia Ltda. v. Kevo Ouz recognized this. Vaga-lume Midia Ltda. v. Kevo Ouz, FA 1287151 (Nat. Arb. Forum Dec. 2009);
(viii) StreetPrices.com v. Nett Corp., FA0908001280020 (Nat. Arb. Forum Nov. 2009);
(ix) Quixtar Inv. Inc. v. Hoffman, D2000-0253 (WIPO May 2000);
(x) Apple Inc. v. Bijan, FA 1295941 (Nat. Arb. Forum Jan. 2010);
(xiii) SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000);
(xiv) British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000);
(xv) Coupons Inc. v. Motherboards.com, FA 192249 (Nat. Arb. Forum Nov. 2003);
· Complainant contends that it is widely known by the marks “hostmysite” and “hostmysite.com,” and has established trademark rights in both through lengthy and significant use in commerce. Respondent’s addition of the generic term “online” does not distinguish the Domain Name from the Complainant’s Mark. Given prior decisions on similar grounds, the Domain Name at issue is confusingly similar to the Mark.
· Complainant alleges that it has worked for over ten years and spent more than $25,000,000 for promoting, marketing, developing, supporting, selling and providing the services associated with the Mark besides the significant amount of time spent by it in establishing an association between the website “hostmysite.com” and its services. The Complainant in this regard has relied upon the decision of NAF in Canada Israel Experience v. Oranim Tracel Ltd, FA 215312 (Nat. Arb. Forum Jan. 2004) It further alleges that contrary to this, the Respondent has neither been known by this Mark, nor has it received any permission to use the Mark, nor has it ever used the Mark in connection with the bona fide offering of goods and services.
· The complainant contends that in terms of the ICANN Policy 4(c)(ii) if the owner, or complainant establishes that it is commonly known by the domain name it will deem to have satisfied the requirements of the Policy. The Complainant in this regard relied upon the decisions in Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); and British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
· It is the contention of the Complainant that the Respondent has registered almost 600 websites attempting to leverage the trademark investments of others. Respondent’s lack of rights or legitimate interests in the Domain Name would be apparent on the Website as it is difficult to imagine that if an entity is legitimately engaged in web hosting, would use their home page to advertise for the services of competing web hosting companies. Moreover, the Respondent does not appear to offer significant goods and services. While alleging that the respondent’s site does not function as a bona fide offer of goods in commerce, but simply as a source of click through revenue taking advantage of Complainant’s investment in the Mark, the Complainant avers that the Website of respondent does not offer true help desk or FAQ - all of which are requirements of a successful hosting company.
· Complainant alleges that the Respondent is in the business of deriving revenue from “click through” advertising for web hosting companies. The advertisements served on Respondent’s site are designed specifically to capitalize on the Mark and Phrase, by serving up the advertising of Complainant’s competitors. The Complainant has relied upon the decision of this Forum on whether click through advertising is sufficient to vest legitimate rights in a domain name registrant in the case of Coupons Inc. v. Motherboards.com, FA 192249 (Nat. Arb. Forum Nov. 2003), wherein the Panel held that the use of a generic or descriptive term to drive click through advertisement was a legitimate use of the domain name.
· The Complainant claims that it has made a huge investment of $25,000,000 in not only promoting the Mark, but also was engaged in significant marketing designed specifically to associate the goods and services offered at its website with the Mark of Complainant and it is known by common law trademark “hostmysite”, independent of its Mark. Contrary to this, Respondent has made only minimum investments and is also not known by the mark in question but by various names - “casinoonline.com,” “Mitchell Web Designs,” or “Turn Key Web Designs” on various aspects of the Website. The complainant contends that the Respondent is merely capitalizing on Complainant’s investment in the Mark to generate click through profits rather than using the Website for web hosting. The Complainant has relied upon the decision of WIPO in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp., D2002-0383 (WIPO July 2002) (20 years use of a mark establishes a presumption that the mark as acquired distinctiveness); and Adobe Systems, Inc. v. Domain OZ, D2000-0057 (WIPO, March 22, 2000) (use of a website to capitalize on customer confusion with a complainant’s mark does not establish rights or legitimate interests in the domain names for the respondent).
· The Complainant contends that assuming that Respondent is in the business of web hosting, the use of the domain name to compete with Complainant is not a bona fide offering of goods or services, a legitimate non-commercial or even a fair use of the Domain Name in terms of Para 4(c)(i) and (iii) of the Policy. The Complainant in this regard relied upon the decision of this Forum in Computerized Sec. Sys., Inv. v. Hu, FA 157321 (Nat. Arb. Forum June 2003), wherein the Panel had refused to hold that the respondent had any legitimate rights in a domain name which was a typographical variation on the complainant’s domain name, even though the respondent in that case was offering goods and services on the site. The Respondent in that case had simply added the word “online” to its domain name. The complainant alleges that even if it is presumed that the Respondent is offering goods and services on the website, but the fact that Respondent is trading on a variation of a word in which Complainant has not only a U.S. trademark registration, but also significant common law rights, is not sufficient to vest rights in the mark for the purposes of the Policy.
· The Complainant in the present case has also relied upon the decision of this Forum in FinPlan, Inc. v. Fin. Resource Ctr., FA 96358 (Nat. Arb. Forum Feb. 2001) wherein the Panel has held that use of two “generic” words which had been registered as a trademark is “often described as trademark infringement”.
· It is further the contention of the Complainant that the Respondent is not now, and has never been known by the name “hostmysiteonline.” The Complainant thereafter contends that it would be apparent from perusal of “Whois.net” ownership information, copy whereof has been annexed as Exhibit-L, that the Respondent is known by the name “casinoonline.com.” and the contact address for its Domain Name is “firstname.lastname@example.org.”
· The Complainant alleges that the Respondent has also tried to disguise its true name with payment for services made to “Mitchell Web Designs” and various pages on the Website leading to “Turn Key Website Designs.” Respondent’s failure to be commonly known by the domain name at issue is, by itself, persuasive evidence of a lack of a right or legitimate interest in a domain name. The Complainant has referred to the following decisions to contend that the respondent does not have any rights in a domain name when the respondent is not known by the said mark : -
(i) Innovasjon Norge v. VisitWorld, FA 1295788 (Nat. Arb. Forum Jan. 2010);
(iii) Citing, Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Aug. 11, 2006);
(iv) Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003);
(v) Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001),
· The complainant alleges that the use of the Domain Name to profit off by adding words is not a legitimate use, even if Respondent does have the capability to provide web hosting services. Use of a domain name in which a complainant has established a significant amount of goodwill would fall within the Policy. The complainant has referred to the decision of WIPO in 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO Mar. 5, 2009). NAF in 24/7 Real Media’s decision while observing that the respondent in that case was not known by the domain name in question or the complainant in that case has not consented to the use of the said domain name, has held that the respondent in that case does not have any legitimate rights or interests in the domain name.
· The Complainant argues that its substantial investment in the Mark establishes Complainant’s rights in the Domain Name. The fact that Respondent does not offer bona fide goods and services, derives “click through revenue” from ads from its own competitors as well as those of Complainant’s, has failed to create even a rudimentary website capable of generating sales, and is not commonly known by the name “hostmysiteonline.com” shows Respondents lack of legitimate rights in the Domain Name.
· The Complainant further argues that this matter is different from those in which a panel has found no bad faith from the use of a generic term, such as “just bulbs,” even in light of a registered trademark. See, Superiority, Inc. v. none/Motherboards.com, D2003-0491 (WIPO Oct. 9, 2003) (“while Apple may have a trademark for Apple for computers, it has no rights to stop others from using ‘apple’ or <apple.com> to sell apples”); and Lumena s-ka zo.o v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000) (bad faith may be established even given a generic domain name, where there is evidence that the respondent registered the domain name with the intent of trading on the complainant’s interest in the mark). These facts, coupled with prior decisions, are sufficient for Complainant to prevail on this aspect of the Policy.
· The complainant alleges that the Respondent has demonstrated bad faith by using the Domain Name for commercial gain to attract Internet users who are looking for “hostmysite.com.” Respondent’s use of a Domain Name that is confusingly similar to the Mark harms the goodwill that Complainant has generated in its long-established business. The use of a website capitalizing on consumer confusion and profiting by offering the products of competitors of the owner of a mark has been held to be evidence of bad faith. See, TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003). The content of Respondent’s web page is per se evidence of its intent to profit off consumer confusion and is evidence of its bad faith.
Complainant further alleges that the Respondent’s activities differ from
those of a traditional company offering items for sale. It is difficult to imagine any company
serving up ads for competitors on its home page. This activity is per se evidence of bad
faith. See, TM Acquisition Corp. v.
· The Complainant argues that Respondent’s bad faith use is evident in its business practices, which are generally designed to confuse Internet users and gain money by assuming the identity of legitimate businesses. ICANN Policy 4(b) sets out a non-exhaustive listing of bad faith criteria. In particular, Respondent has demonstrated its bad faith by using the Domain Name to confuse members of the Internet community into thinking that they are doing business with Complainant. Panels such as that in Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000), has declared that Policy 4(b) as a listing of bad faith factors is without limitation evidence of bad faith.
· The Complainant further argues that in Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000), it has been held that a domain name registered to leverage the reputation of the owner of a mark, was not only registered in bad faith, but also used in bad faith as well. While placing reliance on this case, the Complainant argues that the Respondent’s activities in the present case, have met the criteria set out in ICANN Policy 4(b)(iv) by usage of the Domain Name to attract, for commercial gain, online consumers to the Website by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the Website. Respondent’s use of the Domain Name for click through advertising for web hosting services is, per se, evidence of bad faith under the Policy. Complainant’s substantial investment in the Mark, and presence in the industry, create a high value for click through advertising. In addition, the use of the simple word “online” creates a likelihood of confusion in the minds of purchasers of hosting services who are searching for Complainant’s site.
· The Complainant contends that the fact that Respondent is using a domain name which is virtually identical to the Mark of Complainant, while purporting to offer the same services as Complainant, is evidence of bad faith use by the respondent. Further, the Website prominently features click through advertisement, while failing to offer traditional hallmarks of an online business, such as, FAQs, downloads, or a knowledge-base, are the other examples of bad faith under the Policy.
· The respondent in his response dated 16th May, 2010 contended that he had registered the website “hostmysiteonline.com” on January 21st 2008. He averred that he had chosen this domain because he thought that these were common terms and that a person might type into a search engine when looking for hosting. He further stated that as soon as he had created the website he started offering hosting services and still do offer hosting services. He is currently stated to be offering hosting to 174 clients some of whom host multiple sites with him.
· The respondent stated that he had no idea that a website had already existed for the domain “<hostmysite.com>”. He is stated to have never heard of the Complainant-company/domain name until he received a legal notice to cease and desist from the attorney of the Complainant. The respondent claims that upon receipt of the legal notice, he had tried to visit the website “<hostmysite.com>”, but there had not been a website existing with that domain name. He further claims that instead upon clicking at the domain name, the browser gets redirected to the domain/website “hosting.com”.
The respondent contends that the Complainant acts
like IT, does not offer hosting services simply because it has 3 Google Adsense
ads on respondent’s site when in fact the complainant had an employee sign-up
for hosting on respondent’s site. The respondent states that on February 10th,
2010, Mr. Bryan Muthig had signed up for a hosting account and the invoice for
that was paid from the Paypal account of
Mr. W. David Snead, P.C. having an e-mail address - email@example.com. The said person chose a plan on the page http://www.hostmysiteonline.com/order.php where the respondent is stated to have been offering 3 different hosting plans each with 3 different lengths of time. He then had proceeded to sign-up through respondent’s billing manager located at http://billing.hostmysiteonline.com/.
· Regarding Exhibit-F, the respondent contends that he does have 3 ads that are served by Google Adsense. They are at the bottom of his web pages and sometimes promote respondent’s direct competitors and sometimes they promote products and/or websites related to the hosting and products which he does not offer. The respondent admits that these are placed simply for supplemental income and make up, at most, 5% of the income ever generated by his website. The respondent contends that many websites use Google Adsense ads to generate supplemental income but that doesn’t mean they are not focused on their core business.
· With regard to Exhibit-G, the respondent stated that he does have a FAQ located at http://www.hostmysiteonline.com/faq.php and product descriptions are located on the page http://www.hostmysiteonline.com/order.php by clicking the relative plan details link. The billing manager is simply that, a billing manager and when logged in to it, he offers support options, billing information, invoices, copies of paid invoices, and a copy of the login and password to access ones hosting account. The respondent avers that it only offers 3 different hosting plans and hence it does not need extensive downloads or tutorials for its site. Respondent claims that support is offered to it through the billing manager and by the contact email located on the website FAQ or support page.
· As to Exhibit-H, the respondent contended that after a client completes the sign-up process, they receive an email with login details for their hosting control panel including the URL to access it. Also, on the FAQ page there is a URL listed where any client can login to their hosting control panel. As far as email goes, a client has to first create an email address before they can access it. After they create the email they can access it through their hosting control panel or through a webmail page. This information is also located on the FAQ page. There is nothing on the website which should be allowed access to but access to the same has not been provided. There are billing manager (http://billing.hostmysiteonline.com/) and the control panel, (http://www.hostmysiteonline.com:2082/) which can be used by any client to login to their hosting account control panels.
· The respondent denied having had used the domain in a manner which is identical or confusingly similar. The respondent argued that while the complainant uses domain name “<hosting.com>", the respondent’s domain “<hostmysite.com>” is forwarded to the website of Complainant “<hosting.com>”. The respondent contends that he does not understand as to how his domain “<hostmysiteonline.com>” is identical or confusingly similar to the domain of Complainant. The respondent states that their domain name is not confusingly similar to Complainant’s mark because the addition of the word “online” to it distinguishes the disputed domain name from Complainant’s mark. The respondent further claims that the mark and/or domain is made of common and/or generic terms. The respondent contends that it is for this reason that the trademark has “.com” at the end of it because the complainant would not be able to obtain a mark for common or generic terms.
· The respondent denied that he does not have any rights or legitimate interests in the Domain Name. The respondent states that he has used the domain since the date of registration in January of 2008 to offer web hosting services. The respondent is stated to have been currently offering hosting to 174 clients, some of whom are stated to have multiple websites hosted with respondent. The respondent admits that he is and he has been offering these services on the domain name since its registration at 3 levels of hosting which is aimed at a consumer rather than for business customers. The respondent claims that they have provided a help desk for all client accounts which could be found in the billing manager section of the website. The support features are stated to be offered within the billing manager and there is a support e-mail listed on the website FAQ page.
· The respondent contends that 3 Google Adsense ads feature on the bottom of most of respondent’s pages is provided to create supplemental income. Respondent claims that many websites use this service to generate additional income and this in no way means that respondent only wants to use the site for click through advertising. The respondent claims that ads provided on the websites comprise 5% of respondent’s website income at the most. These ads are actually generated by Google. Google crawls the website content and places relevant ads. These are sometimes ads for hosting companies or they are sometimes targeting hosting related goods and/or services.
· The respondent claims that he goes by the names “casinoonline.com,” “Mitchell Web Designs,” or “Turn Key Web Designs”. The respondent further claims to have the domain mitchellwebdesigns.com and it claims to be known by that name for that site. It also claims that it has never been known by the names “casinoonline.com” or “Turn Key Web Designs”. The respondent admits that it has multiple websites and because of that each website business is known by a different name. The respondent contends that having multiple businesses does not have anything to do with this case because the respondent is claimed to have been known by “hostmysiteonline.com” amongst his hosting clients. The respondent claims that the terms used in the domain name are common and generic and therefore, Complainant does not have an exclusive monopoly on the terms for use on the internet.
· As to the use of domain name in bad faith, the respondent contended that when he had registered his domain name, he had no idea that anyone already has a mark for “hostmysite.com”. The respondent contends that at the time of selecting a domain name he had been looking for a hosting domain which contained only generic terms that a person might enter into a search engine when searching for hosting. He denies having used the domain name in bad faith at any time as the respondent claims to have offered quality web hosting services since the day it had registered the domain. The respondent claims that his website does offer a FAQ and it does not have to download it. Further, the website is stated to have a support desk contained within the billing manager.
· The respondent contends that there is no evidence to show that I intentionally attract internet users to my website, for commercial gain, by creating a likelihood of confusion with the complainant’s mark. The respondent denies having confused people into thinking that they are doing business with the complainant when they use the website hosting.com.
· The respondent claims that his domain comprises entirely of common / generic terms. The respondent denies having registered and/or used his domain name comprising of common terms, in bad faith. The respondent claims that he has been using the domain name for his hosting business since January 2008, i.e. for over 2 years. The respondent contends that the Complainant has filed the present complaint by employing the method of reverse domain name hijacking because they waited over two years to challenge respondent’s registration and use of the disputed domain name, and for bringing an unfounded complaint, particularly, when one tries to visit “hostmysite.com” it is forwarded to the domain “hosting.com” and which does not make any mention about the term “hostmysite.com”.
The Panel finds that the use of the domain name “<hostmysiteonline.com>” by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
· It is to be observed that the complainant is required to prima facie show the absence of any right or legitimate interest of the respondent in the disputed domain name. This principle has also been highlighted in the decision of this Forum in - 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); and 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, are relevant. 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 contends that Respondent is not commonly known by the disputed domain name. Complainant further asserts that it has not granted Respondent permission to use Complainant’s mark in any way. The WHOIS information for the <hostmysiteonline.com> domain name lists “Paul Mitchell” as the registrant of the <hostmysiteonline.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii) where the WHOIS information does not indicate that Respondent is commonly known by the registered domain name. In this regard the decision of this Forum in 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); and also in Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”) are relevant to this case.
· Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant makes note of the fact that Respondent has click-through advertisements for competing services displayed on its website. Complainant further asserts that Respondent cannot profit off of a confusingly similar disputed domain name with “adwords” even if Respondent has the capability to provide web hosting services. The Panel finds that Respondent’s use of the disputed domain name to offer competing services and display links to competing businesses of Complainant does not constitute a use in connection with 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
· The Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and the onus lies on the Respondent to show that it does have rights or legitimate interests in the disputed domain name. The user of HOSTMYSITE.COM in the disputed domain name by the respondent, the Panel finds, is ex-facie neither bona fide nor justified. It is not in good faith and the respondent cannot be permitted to secure to itself any right whatsoever in HOSTMYSITE.COM belonging to the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hostmysiteonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: 15th June, 2010
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