iVillage Inc. v. Ling Shun Shing
Claim
Number: FA0501000406664
Complainant is iVillage Inc. (“Complainant”), represented
by Bradford Breen, of Orrick, Herrington and Sutcliffe LLP, 666 Fifth Avenue, New York, NY 10103. Respondent is Ling Shun Shing (“Respondent”), 138 Yi
Xue Yuan Rd, Shanghai 200032, China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <healthivillage.com>, registered with Moniker
Online Services, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 26, 2005.
On
January 20, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <healthivillage.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
January 28, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 17, 2005 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@healthivillage.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 28, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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.”
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration
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 <healthivillage.com>
domain name is confusingly similar to Complainant’s IVILLAGE mark.
2. Respondent does not have any rights or
legitimate interests in the <healthivillage.com> domain name.
3. Respondent registered and used the <healthivillage.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant has
operated various media services under the IVILLAGE mark since 1995. Complainant
operates a website at the <ivillage.com> domain name that is ranked in
the top 50 of websites receiving the most unique visitors on the World Wide
Web. “Health” is a prominent subtopic on the <ivillage.com> website that
can be accessed by clicking on the “Health” link from Complainant’s website or
by navigating to Complainant’s <ivillagehealth.com> domain name.
Complainant also holds numerous worldwide trademark registrations that
incorporate the IVILLAGE mark, including U.S. trademark Reg. No. 2,122,213
(issued December 16, 1997), which is on file at the United States Patent and
Trademark Office.
Respondent
registered the <healthivillage.com> domain name on October 15,
2004. The domain name resolves to a portal website that includes a search
engine and provides various links to other websites that offer goods and
services in direct competition with Complainant. Respondent’s website also
subjects Internet users to various pop-up advertisements.
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
established by extrinsic proof in this proceeding that it has rights in the
IVILLAGE mark through registration with the United States Patent and Trademark
Office and through continuous use of the mark in commerce since 1995. 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).
The <healthivillage.com>
domain name is confusingly similar to Complainant’s IVILLAGE registered
trademark. The domain name fully incorporates the mark while merely adding the
generic term “health,” which is descriptive of services and information that
Complainant offers through various media, and the “.com” generic top-level
domain. Neither the addition of a generic and descriptive word nor the addition
of a generic top-level domain distinguishes the <healthivillage.com>
domain name from Complainant’s IVILLAGE mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not submit a response in this proceeding. Therefore, Complainant’s submission
has gone unopposed and its arguments unrefuted. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant has alleged that
Respondent has no rights or legitimate interests in the disputed domain name.
Because Respondent has failed to submit a response, it has failed to propose
any set of circumstances that could substantiate its rights or legitimate
interests in the <healthivillage.com> domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The <healthivillage.com> domain name redirects unsuspecting
Internet users to a website that provides links to other commercial websites,
including websites that offer services that are in competition with
Complainant’s services. The Panel infers that Respondent commercially benefits
from this diversion by receiving pay-per-click fees from advertisers when
Internet users follow the links on its website. Moreover, Internet users
visiting Respondent’s websites are subjected to pop-up advertisements.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill and fame associated with the IVILLAGE mark. Thus, Respondent
fails to establish rights or legitimate interests in the domain name. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant’s site to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find that a bona
fide offering of services in a respondent’s operation of [a] web-site using
a domain name which is confusingly similar to the complainant’s mark and for
the same business.”); see also Wells Fargo & Co. v. Party Night Inc.,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s
WELLS FARGO mark to divert Internet users to websites featuring pop-up
advertisements was not a bona fide offering of goods or services); see also Bank
of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003) (finding that Respondent’s use of infringing domain names to direct
Internet traffic to a search engine website that hosted pop-up advertisements
was evidence that it lacked rights or legitimate interests in the domain name).
No
evidence before the Panel suggests Respondent is commonly known by the <healthivillage.com>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information
indicates that the registrant of the disputed domain name is known as “Ling
Shun Shing” and is not known by the confusingly similar second-level domain
that infringes on Complainant’s IVILLAGE mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. See
Tercent Inc. v. 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 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”); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights or legitimate interests in a domain name when Respondent is not known by
the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using a confusingly similar variation of Complainant’s IVILLAGE mark within
the <healthivillage.com> domain name to ensnare unsuspecting
Internet users. Respondent then redirects the users to its website, which
offers sponsored links to other commercial websites. The Panel infers that
Respondent commercially benefits from this diversion by receiving pay-per-click
fees from advertisers when Internet users follow the links on its website. Such
infringement is what the Policy was intended to remedy. Thus, the Panel finds
that Respondent registered and used the domain name in bad faith under Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant’s mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that directly
compete with Complainant. Respondent’s use of the <healthivillage.com>
domain name establishes that Respondent registered the domain name for the
purpose of disrupting the business of a competitor, which evidences bad faith
use and registration under Policy ¶ 4(b)(iii). See S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant’s marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant's business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation of
Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain name, which is confusingly similar to a
well-known mark in which Complainant has rights, suggests that Respondent knew
of Complainant’s rights in the IVILLAGE mark. Additionally, Complainant’s
trademark registration, on file at the United States Patent and Trademark
Office, gave Respondent constructive notice of Complainant’s rights in the
mark. Moreover, Respondent’s knowledge of Complainant’s rights in the mark is
evidenced by the fact that its website provides links to Complainant’s
competitors. Thus, the Panel finds that Respondent chose the <healthivillage.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <healthivillage.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 14, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum