SharedBook LTD v. Virtual Sky c/o domain support
Claim Number: FA0512000610708
Complainant is SharedBook LTD (“Complainant”), represented by Antonella T. Popoff, 232 Madison Avenue, Suite 1107, New York, NY 10016. Respondent is Virtual Sky c/o domain support (“Respondent”), P.O. Box 20543 SMB, George Town, Grand Cayman 32084, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sharedbooks.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On December 17, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <sharedbooks.com> domain name 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 December 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 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@sharedbooks.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 20, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sharedbooks.com> domain name is confusingly similar to Complainant’s SHAREDBOOK mark.
2. Respondent does not have any rights or legitimate interests in the <sharedbooks.com> domain name.
3. Respondent registered and used the <sharedbooks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SharedBook Ltd., is a pioneer in web annotation technology that allows users the ability to create their own personalized printed books and other printed products by selecting from a pool of online content. Through the use of Complainant’s patent-pending web technology, which has been in development since June 2002, Complainant creates co-branded websites that contain client content so that users accessing such websites can share their photos and stories by adding them to content that is contributed by organizations and clients, as well as other members, and then select which content to include in their books.
Complainant has extensively marketed and promoted its SHAREDBOOK mark since April 2004 throughout the United States and internationally for its products and services. Complainant has spent substantial sums of money on advertising and promoting of its products and services under the SHAREDBOOK mark, by way of distributing of thousands of printed flyers and brochures, advertisements in targeted consumer publications, several regional newspaper advertisements across the United States, direct email campaigns to consumers and participation at several targeted consumer events where Complainant displayed a booth, billboard advertisements, poster boards, t-shirts, flyers and give aways. Numerous articles have been written about Complainant and its products and services and have been published on the internet.
Complainant has owned and operated the <sharedbook.com> domain name since June 5, 2002 and uses the domain name to host a number of co-branded sub-sites for well-known and established clients. Complainant has also filed an application with the United States Patent and Trademark Office (“USPTO”) to register its SHAREDBOOK mark (filed November 10, 2005, Ser. No. 78,751,386).
Respondent registered the <sharedbooks.com> domain name on April 23, 2005. Respondent is using the disputed domain name to redirect Internet users to a website that features links to other third-party sites, some of which offer services that are similar to those offered by 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.
Through Complainant’s extensive and continuous promotion of the SHAREDBOOK mark in commerce, the mark has acquired secondary meaning as a source identifier for Complainant and its products. The Panel finds that Complainant has established common law rights in the SHAREDBOOK mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant asserts that the <sharedbooks.com> domain name is confusingly similar to Complainant’s SHAREDBOOK mark pursuant to Policy ¶ 4(a)(i) because the domain name incorporates Complainant’s entire mark, with the addition of the letter “s.” The Panel finds the addition of the letter “s” does not negate the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain name to Complainant’s SHAREDBOOK mark pursuant to Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or
legitimate interests in the <sharedbooks.com> domain name. When a Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <sharedbooks.com> domain name pursuant to Policy ¶ 4(c)(ii). Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 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).
Moreover, Respondent is using the <sharedbooks.com>
domain name to redierct Internet users to third party websites, some of
which offer services similar to those offered by Complainant. Respondent presumably garners click-through
fees for providing links to these websites.
Respondent’s commercial use of a domain name confusingly similar to
Complainant’s mark fails to demonstrate a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use or fair
use of the domain name under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent intentionally registered the disputed domain name incorporating Complainant’s mark to divert Internet users to Respondent’s commercial website. The Panel concludes that such activity is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel further finds that Respondent’s registration and use of a typosquatted version of Complainant’s SHAREDBOOK mark establishes Respondents bad faith registration and use of the <sharedbooks.com> domain name pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <sharedbooks.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 2, 2006
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