InfoSpace, Inc. v. Greiner c/o Phil
Greiner
Claim
Number: FA0401000227653
Complainant is InfoSpace, Inc. (“Complainant”), represented
by Gerard A. Taylor, of Stokes Lawrence PS,
800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179. Respondent is Greiner c/o Phil Greiner (“Respondent”), Kapselu 10 a 6, Riga, Null, LV-1050,
LV
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <www-dogpile.com>, registered with Direct
Information Pvt. Ltd., d/b/a Directi.Com (hereinafter “Directi.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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 16, 2004; the Forum received a hard copy of the
Complaint on January 20, 2004.
On
January 20, 2004, Directi.Com confirmed by e-mail to the Forum that the domain
name <www-dogpile.com> is registered with Directi.Com and that
Respondent is the current registrant of the name. Directi.Com has verified that
Respondent is bound by the Directi.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
January 26, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 16, 2004 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@www-dogpile.com by
e-mail.
No
official Response was received from Respondent. Respondent did submit an
informal e-mail on February 4, 2004. However, this e-mail did not contain the
important certification statement required by UDRP Rule 5(b)(viii) and failed
to meet the remainder of the requirements for an official Response outlined in
UDRP Rule 5(b). Therefore, having received no official 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
February 25, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
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 <www-dogpile.com>
domain name is confusingly similar to Complainant’s DOGPILE mark.
2. Respondent does not have any rights or
legitimate interests in the <www-dogpile.com> domain name.
3. Respondent registered and used the <www-dogpile.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
InfoSpace, Inc., provides directory and search engine services via the
Internet, as well as brokerage of electronic commerce transactions services
online. Through its wholly-owned subsidiary, Go2Net, Inc., Complainant uses the
DOGPILE mark in connection with these services, and has done so since 1996.
Complainant’s U.S. registrations of the DOGPILE mark (Reg. Nos. 2,401,276 and
2,456,655, registered on November 7, 2000 and June 5, 2001, respectively) both
predate Respondent’s registration of the disputed domain name on March 2, 2003,
as does Complainant’s October 31, 1996 registration of the <dogpile.com>
domain name.
Respondent,
Greiner c/o Phil Greiner, does not currently use the <www-dogpile.com>
domain name, and has made no constructive use of the domain name since its
registration. In an unofficial, uncertified response to the Complaint, which
did not specifically respond to any of Complainant’s allegations other than to
mention that Respondent operates a cleaning business and that “[t]he name
‘Dogpile.com’ is unheard of in my part of the world,” Respondent noted that it
had “no problem transferring the name to [Complainant] provided that I receive
a reasonable offer of compensation for the name, paperwork, time spent, etc…”
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 has
established rights in the DOGPILE mark through registration of the mark on the
Principal Register of the U.S. Patent and Trademark Office, as well as through
widespread use of the mark in commerce since 1996. See Microsoft Corp. v. J.
Holiday Co., D2000-1493 (WIPO Feb. 20, 2000) (“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.”); see also 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
Respondent operates. It is sufficient that Complainant can demonstrate a mark
in some jurisdiction).
Respondent’s <www-dogpile.com>
domain name is confusingly similar to
Complainant’s DOGPILE mark. Respondent’s use of the “www” prefix to attempt to
distinguish its domain name from Complainant’s DOGPILE mark is a known
technique of cybersquatters, and does not alter the fact that the dominant
feature of the disputed domain name is Complainant’s mark. See Marie
Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding
that the letters "www" are not distinct in the "Internet
world" and thus Respondent 's <wwwmarieclaire.com> domain name is
confusingly similar to Complainant's MARIE CLAIRE trademark); see also Dana
Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum
Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name
confusingly similar to Complainant's registered DANA mark because Complainant's
mark remains the dominant feature).
Accordingly, the
Panel finds that the <www-dogpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark under
Policy ¶ 4(a)(i).
The fact that
Respondent utilized Complainant’s DOGPILE mark, in its entirety, and merely
added the “www” prefix to the mark is evidence that Respondent lacks rights and
legitimate interests in the disputed domain name. See Diners Club Int’l Ltd.
v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights or legitimate interests in the disputed
domain name vis á vis Complainant); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June
7, 2000) (finding that fair use does not apply where the domain names are
misspellings of Complainant's mark); see also
Furthermore, Respondent’s failure to use the disputed domain name,
without any evidence to support the conclusion that it intends to use the
domain name for a bona fide offering of goods or services, is additional
evidence that Respondent lacks rights or legitimate interests in a domain name
that incorporates Complainant’s mark. This is especially true considering that
there is no evidence that Respondent has any rights in the WWW-DOGPILE mark of
its own. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or
legitimate interests where Respondent has advanced no basis on which the Panel
could conclude that it has a right or legitimate interest in the domain names,
and no use of the domain names has been established); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering
the domain name is not sufficient to establish rights or legitimate interests
for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
Finally,
Respondent’s apparent willingness to dispose of its rights in the disputed
domain name via sale of its registration to Complainant is evidence that
Respondent lacks rights or legitimate interests in the disputed domain name. See
Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do
not exist when one holds a domain name primarily for the purpose of marketing
it to the owner of a corresponding trademark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<www-dogpile.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s
domain name is a simple and popular variation of a trademark commonly used by
typosquatters—the addition of the “www” prefix to a known trademark, in this
case the DOGPILE mark. Such a domain name evidences actual knowledge of the
underlying mark prior to the registration of the domain name, and as Respondent
failed to submit any evidence to counter this inferrence, Respondent’s actions
evidence bad faith registration of the disputed domain name. See RE/MAX
Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring
that Respondent’s registration of the <wwwremax.com> domain name, incorporating
Complainant’s entire mark, was done with actual notice of Complainant’s rights
in the mark prior to registering the infringing domain name, evidencing bad
faith); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6,
2003) (stating that “in typosquatting
cases, such as this one, it would be difficult for Respondent to prove to the
Panel that it did not have actual knowledge of Complainant’s distinctive
MEDLINE mark when it registered the infringing <wwwmedline.com> domain
name”).
Respondent’s passive holding of the infringing domain name is evidence
that the domain name was used in bad faith, fulfilling the second prong of
analysis under Policy ¶ 4(a)(iii). Passive holding in and of itself is evidence
of bad faith use of a domain name. In this dispute, Respondent’s attempt to
sell its passively held domain name registration to Complainant for a
“reasonable offer of compensation” i.e. in excess of Respondent’s out of pocket
expenses, bolsters the conclusion that Respondent’s passive holding equates to
bad faith use of the domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)
(finding that “it is possible, in certain circumstances, for inactivity by the
Respondent to amount to the domain name being used in bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale).
The Panel thus
finds that Respondent registered and used the <www-dogpile.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is 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 <www-dogpile.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 8, 2004
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