InfoSpace, Inc. v. domains Asia Ventures
Claim
Number: FA0310000198909
Complainant is InfoSpace, Inc., Bellevue, WA
(“Complainant”) represented by Shannon
M. Jost, Leslie C. Ruiter, and Pallavi M. Wahi of Stokes Lawrence, P.S..
Respondent is domains Asia
Ventures, Xiamen, Fujian, China “Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dogpileuk.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 30, 2003; the Forum received a hard copy of the
Complaint on October 6, 2003.
On
October 6, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <dogpileuk.com> is registered
with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the
current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has
verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a
Dotregistrar.Com 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
October 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 28, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@dogpileuk.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 4, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dogpileuk.com>
domain name is confusingly similar to Complainant’s DOGPILE mark.
2. Respondent does not have any rights or
legitimate interests in the <dogpileuk.com> domain name.
3. Respondent registered and used the <dogpileuk.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
provides wireless and Internet software and application services to leading
wireless and broadband providers, websites, and merchant resellers around the
world. Specifically, some of the
services provided by Complainant include directory services offering access to
information about various subjects via the Internet, search engines for
obtaining data on the Internet, and brokerage of electronic commerce
transactions conducted via the Internet.
Complainant has offered its services in connection with the DOGPILE mark
and its <dogpile.com> and <dogpile.net> domain names since at least
as early as 1996.
Respondent
registered the <dogpileuk.com> domain name on July 17, 2003. When Internet users type in the <dogpileuk.com>
domain name, they are connected with a website that features pop-up and banner
advertising. The website also offers
searching or indexing services.
Respondent
has no relationship to Complainant and is not authorized to use the DOGPILE
mark or any variations thereof.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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
registered the DOGPILE mark on the Principal Register of the USPTO. Accordingly, the Panel finds that Respondent
has established rights in the DOGPILE mark.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
Respondent’s <dogpileuk.com>
domain name is confusingly similar to Complainant’s mark. Respondent added the letters “uk” to
Complainant’s entire DOGPILE mark. The
letters “uk” are likely to be understood by consumers as a geographic
identifier for the United Kingdom. The
Panel reasonably infers that Internet users may believe that the website
located at the <dogpileuk.com> domain name is run by a United
Kingdom branch or affiliate of Complainant.
Thus, Respondent’s addition of the letters “uk” to Complainant’s mark
does not materially change the impression of the domain name. Consequently, the Panel finds that the
geographic identifier “uk” does not significantly distinguish Respondent’s
domain name from Complainant’s mark under Policy ¶ 4(a)(ii). See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that Respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to Complainant’s mark as "the combination of a geographic term with
the mark does not prevent a domain name from being found confusingly similar");
see also VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between
Complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where Respondent added the word “India”
to Complainant’s mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response asserting any circumstances under which the Panel
could determine it has rights or legitimate interests in the <dogpileuk.com>
domain name. In the absence of a
Response, the Panel is hard-pressed to find that Respondent has rights or
legitimate interests in the domain name at issue. Thus, the Panel accepts all allegations asserted in the Complaint
as true and infers that Respondent lacks any rights and legitimate interests in
the domain name. See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a Response or provided the Panel with evidence to suggest otherwise).
Respondent is
using the <dogpileuk.com> domain name in connection with web
searching or indexing services, in direct competition with Complainant. In addition, Respondent is using the domain
name to generate traffic to its website for the purpose of generating revenues
derived from the pop-up and banner advertisements. The Panel infers that Respondent is obtaining revenue based on
the traffic directed to its website and the advertisements displayed in
connection with the domain name. The
Panel finds that Respondent’s use of the domain name is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002)
(finding that Respondent’s use of a confusingly similar domain name to operate
a pay-per-click search engine, in competition with Complainant, was not a bona
fide offering of goods or services).
Respondent has
never been known by or operated a business under the DOGPILE mark or the <dogpileuk.com>
domain name. Furthermore, Respondent has no relationship to
Complainant and Complainant has not authorized Respondent to use the DOGPILE
mark for any purpose. Thus, the Panel
concludes that Respondent is not commonly known by the domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is likely
that Internet users are attracted to Respondent’s website because they
mistakenly believe the website located at the <dogpileuk.com>
domain name is sponsored by Complainant or Complainant’s United Kingdom
affiliate. Further evidencing
Respondent’s infringing use, Respondent not only uses Complainant’s entire mark
in the <dogpileuk.com> domain name, Respondent also offers
searching or indexing services that compete with services offered by
Complainant via the Internet. Moreover,
as evidenced by the advertisements that appear at Respondent’s website,
Respondent is profiting by attracting Internet users to its website. Consequently, the Panel finds that
Respondent is using the domain name to intentionally attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s DOGPILE mark as to the source, sponsorship, affiliation or
endorsement of Respondent’s website.
Thus, the Panel concludes that Respondent registered and is using the
domain name in bad faith pursuant to Policy ¶ 4(iv). See Identigene, Inc.
v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
Respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that Complainant is the source of or is sponsoring the services
offered at the site); see also
Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that
Respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name).
Furthermore, Respondent was on constructive notice of
Complainant’s rights in the DOGPILE mark.
Since Complainant’s DOGPILE mark was registered on the Principal
Register of the USPTO prior to Respondent’s registration of the domain name,
the Panel presumes that Respondent had knowledge of Complainant’s rights in its
mark. Thus, the Panel finds that
Respondent registered the <dogpileuk.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
that “there is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively”); see also Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dogpileuk.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 10, 2003