InfoSpace, Inc. v. Marcus Faure and OzNic GmbH
Claim Number: FA0512000605203
Complainant is InfoSpace, Inc. (“Complainant”), represented by Pallavi Mehta Wahi, of Stokes Lawrence, P.S., 800 Fifth Avenue, Suite 4000, Seattle, WA 98104-3179. Respondent is Marcus Faure and OzNic GmbH (“Respondent”), Mehrumer Str. 16, Voerde, DE 46562, DE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <switchboardworldwide.com> and <switchboardcanada.com>, registered with Core-51.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2005.
On December 9, 2005, Core-51 confirmed by e-mail to the National Arbitration Forum that the <switchboardworldwide.com> and <switchboardcanada.com> domain names are registered with Core-51 and that Respondent is the current registrant of the names. Core-51 has verified that Respondent is bound by the Core-51 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 December 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@switchboardworldwide.com and postmaster@switchboardcanada.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <switchboardworldwide.com> and <switchboardcanada.com> domain names are confusingly similar to Complainant’s SWITCHBOARD mark.
2. Respondent does not have any rights or legitimate interests in the <switchboardworldwide.com> and <switchboardcanada.com> domain names.
3. Respondent registered and used the <switchboardworldwide.com> and <switchboardcanada.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, InfoSpace, Inc., provides Internet search,
online directory and mobile entertainment products and services through its
websites at the <switchboard.com> and <switchboard.net> domain
names. In June 2004, Complainant
acquired Switchboard Incorporated, the previous owner of the websites, as well
as the properties and assets of the company.
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the SWITCHBOARD mark (i.e. Reg. No. 2,111,673 issued November 11, 1997). Through its predecessor in interest, Complainant has used the SWITCHBOARD mark since as early as 1996 in association with its online search, directory and advertising services.
Respondent registered the <switchboardworldwide.com> and <switchboardcanada.com> domain names on December 1, 1998. The domain names resolve to a directory website that displays links to several third-party products and services, including some that compete with Complainant.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in its SWITCHBOARD mark through its registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <switchboardworldwide.com> and <switchboardcanada.com> domain names include Complainant’s SWITCHBOARD mark with the addition of the generic or descriptive term “worldwide” or the geographic identifier “canada.” These changes are not enough to render the disputed domain names distinct from Complainant’s mark. Furthermore the use of the generic top-level domain “.com” is irrelevant to this analysis. Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s registered mark. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
Complainant has satisfied its requirements under Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant argues that Respondent has never been known by the <switchboardworldwide.com> and <switchboardcanada.com> domain names or operated a business under the domain names. Furthermore, Complainant contends that Respondent is not authorized to use Complainant’s SWITCHBOARD mark. The Panel has not received any information from Respondent to rebut these assertions and, therefore, finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The <switchboardworldwide.com> and <switchboardcanada.com> domain names are being used to operate commercial websites that display links to various third-party websites, including several that offer products and services similar to Complainant. The Panel does not find a bona fide offering of goods or services under Policy ¶ 4(c)(i) where Respondent is using Complainant’s SWITCHBOARD mark to operate a website that displays links for the purpose of earning referral fees. Furthermore, such use for Respondent’s commercial gain does not constitute a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Complainant has satisfied its requirements under Policy ¶ 4(a)(ii).
Respondent’s use of the <switchboardworldwide.com> and <switchboardcanada.com> domain names to divert Internet users searching for Complainant’s services to Respondent’s directory websites demonstrates Respondent’s intent to attract Internet users to its websites by creating confusion with Complainant’s mark. The registration and use of domain names containing Complainant’s SWITCHBOARD mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Complainant has satisfied its requirements under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <switchboardworldwide.com> and <switchboardcanada.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon Panelist
Dated: January 17, 2006
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