InfoSpace, Inc. v. United Intelligence Ltd c/o Wigley Chambers
Claim Number: FA0605000707611
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 United Intelligence Ltd c/o Wigley Chambers (“Respondent”), Suite 2146 9 Tanbark Circuit, Werrington Downs NSW 2747, AU.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <switchbaord.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2006.
On May 16, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <switchbaord.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 May 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 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@switchbaord.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <switchbaord.com> domain name is confusingly similar to Complainant’s SWITCHBOARD mark.
2. Respondent does not have any rights or legitimate interests in the <switchbaord.com> domain name.
3. Respondent registered and used the <switchbaord.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, InfoSpace, Inc., acquired Switchboard Inc. in June 2004. This acquisition included Switchboard Inc.’s intellectual property and trademarks, including the SWITCHBOARD mark. Thus, Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,111,673 issued November 11, 1997; Reg. No. 2,445,844 issued April 24, 2001) for the SWITCHBOARD mark, which Complainant uses in connection with Internet-based yellow page and white page directory services. Complainant operates websites at the <switchboard.com> and <switchboard.net> domain names in connection with its online directory services.
Respondent registered the <switchbaord.com> domain name on April 3, 2004. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which offers competing online directory services, as well as links to third-party sites offering competing goods and services and unrelated goods and services. Respondent’s website also generates pop-up ads. Presumably, Respondent receives pay-per-click referral fees for redirecting Internet users to these websites.
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.
Complainant has established rights in the SWITCHBOARD mark through registration of the mark with the USPTO. The Panel finds that registration of the mark is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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’s <switchbaord.com> domain name is confusingly similar to Complainant’s SWITCHBOARD mark because Respondent’s domain name transposes the letter “o” and the letter “a” of Complainant’s mark and adds the generic top-level domain “.com.” The Panel finds that such minor alterations do not negate the confusing similarity of the disputed domain name pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has established a prima facie case through its allegation that Respondent does not have rights or legitimate interests in the <switchbaord.com> domain name. Once Complainant makes a prima facie case, Respondent assumes the burden of proving that it does have rights or legitimate interest pursuant to Policy ¶ 4(a)(ii). The Panel may consider Respondent’s failure to submit a Response as evidence that the Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is using the <switchbaord.com>
domain name to redirect Internet users to Respondent’s website featuring a
competing online directory as well as links to other third-party websites
offering both competing and unrelated goods and services, from which Respondent
presumably receives pay-per-click referral fees. Respondent’s use of a domain
name that is confusingly similar to Complainant’s SWITCHBOARD mark to redirect
Internet users to Respondent’s website does not constitute either a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the
respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with the complainant, was not a bona
fide offering of goods or services); see also Wells Fargo & Co. v.
Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user).
Furthermore, there is no available
evidence suggesting that Respondent is commonly known by the <switchbaord.com>
domain name. Complainant asserts that Respondent has no relationship with or
authorization from Complainant that would justify Respondent’s use of
Complainant’s mark. Respondent’s WHOIS
information identifies Respondent as “United Intelligence Ltd., c/o Wigley
Chambers,” which bears no apparent relationship to the <switchbaord.com>
domain name. Thus, Respondent has
failed to establish rights or legitimate interests in disputed domain name
pursuant to Policy ¶ 4(c)(ii). See 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); see
also 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).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent is using the <switchbaord.com> domain name to divert Internet users to Respondent’s website which includes a competing online directory as well as links to third-party websites offering competing goods and services and unrelated goods and services. The Panel finds that such use constitutes disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The confusing similarity between Respondent’s <switchbaord.com>
domain name and Complainant’s SWITCHBOARD mark may mislead Internet users
into assuming that Respondent’s website has a relationship with, or
authorization from, Complainant.
Respondent is capitalizing on this potential confusion in order to
attract Internet users to its website which features a competing online
directory, as well as links to third-party websites offering competing and
unrelated goods and services, from which Respondent presumably receives
pay-per-click referral fees. The Panel
finds that such use constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see also Bama Rags, Inc. v. Zuccarini, FA 94381
(Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a
misspelling of the complainant’s famous mark to attract Internet users to a
series of advertisements).
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <switchbaord.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 27, 2006
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