Cybertania, Inc v. Lepanto
Claim Number: FA0702000921302
Complainant is Cybertania, Inc (“Complainant”), represented by Leo
Radvinsky,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <myfreepaysitecom.com>, <myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>, and <wwwultraxxxpasswords.com> domain names, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and Domain Contender, LLC.
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.
Honorable
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 23, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <myfreepaysitecom.com>, <myfreepaysite.org>, <ultrapassward.net>, and <wwwultraxxxpasswords.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 February 23, 2007, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <ultraxxxpassword.net> domain name is registered with Domain Contender, LLC and that Respondent is the current registrant of the name. Domain Contender, LLC has verified that Respondent is bound by the Domain Contender, LLC 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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <myfreepaysitecom.com> and <myfreepaysite.org> domain names are confusingly similar to Complainant’s MYFREEPAYSITE.COM mark; Respondent’s <ultraxxxpassword.net> and <wwwultraxxxpasswords.com> domain names are confusingly similar to Complainant’s ULTRAXXXPASSWORDS.COM mark; and Respondent’s <ultrapassward.net> domain name is confusingly similar to Complainant’s ULTRAPASSWORDS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <myfreepaysitecom.com>, <myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>, and <wwwultraxxxpasswords.com> domain names.
3. Respondent registered and used the <myfreepaysitecom.com>, <myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>, and <wwwultraxxxpasswords.com domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cybertania, Inc, holds the following trademarks registrations with the United States Patent and Trademark Office (“USPTO”): ULTRAPASSWORDS.COM (i.e., Reg. No. 2,741,422 issued on July 29, 2003), ULTRAXXXPASSWORDS.COM (i.e., Reg. No. 2,706,915 issued on April 15, 2003), and MYFREEPAYSITE.COM (i.e., Reg. No. 3,129,466 issued on August 15, 2006). Complainant is a leading provider of adult entertainment Internet websites. Complainant has used the MYFREEPAYSITE.COM mark since 2002 for entertainment and amusement services on the Internet. The website, <myfreepaysite.com>, currently receives over 20 million visitors each month.
Respondent, Lepanto, registered the <myfreepaysitecom.com> domain name on June 18,
2005 the <myfreepaysite.org> domain name on November 18, 2003, the
<ultraxxxpassword.net> domain name on November 15, 2006, the <ultrapassward.net>
domain name on November 16, 2006, and the
<wwwultraxxxpasswords.com> domain name on November 7, 2006. Respondent is using the disputed
domain names to display directories of links to third-party websites that offer
adult entertainment services, some of which 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.
Complainant has established rights in the ULTRAPASSWORDS.COM
and ULTRAXXXPASSWORDS.COM marks pursuant to Policy ¶ 4(a)(i)
through its registration of the marks with the USPTO. Complainant’s registration of its
ULTRAPASSWORDS.COM and ULTRAXXXPASSWORDS.COM marks preceded Respondent’s
registrations of the <ultraxxxpassword.net>,
<ultrapassward.net>, and <wwwultraxxxpasswords.com> domain
names. Under the Policy, registration of
a mark with an appopriate governmental authority confers rights in that mark to
Complainant. Thus, the Panel finds that
Complainant has established rights in the ULTRAPASSWORDS.COM and
ULTRAXXXPASSWORDS.COM marks pursuant to Policy ¶ 4(a)(i). See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
It is not necessary for Complainant to hold a registered
trademark in order to establish rights in the MYFREEPAYSITE.COM mark. Common law rights are sufficient to satisfy
Policy ¶ 4(a)(i).
See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO
Complainant has established common law rights in its MYFREEPAYSITE.COM mark through extensive and continuous use. Complainant has used the mark since 2002 for entertainment and amusement services on the Internet, namely providing a website featuring images and video clips of models, movies, computer games and fictitious stories. The website, <myfreepaysite.com>, currently receives over twenty million visitors each month. Furthermore, according to Yahoo! Search Engine marketing, during the month of November 2006, the Yahoo! Search Engine received over 300,000 queries related to <myfreepaysite.com>. Thus, the Panel finds that Complainant has created sufficient secondary meaning in the MYFREEPAYSITE.COM mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s
<ultraxxxpassword.net> and <wwwultraxxxpasswords.com> domain
names are both confusingly similar to Complainant’s ULTRAXXXPASSWORDS.COM
mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain names each
contain Complainant’s mark in its entirety or are simply a misspelled variation
of Complainant’s ULTRAXXXPASSWORDS.COM mark.
Respondent’s <ultraxxxpassword.net> domain name simply elminates
the letter “s” and substitutes the generic top-level domain “.net.” in place of
“.com.” The elmination of an “s” and
addition of a generic top-level domain do not sufficently distinguish the
disputed domian name from the mark and thus renders the domain name confusingly
similar to the mark pursuant to Policy 4 ¶ 4(a)(i). Furthermore, Responent’s <wwwultraxxxpasswords.com>
contains Complainant’s mark in its entirety and only adds “www.” The addition of “www” does not avoid a
finding of confusing similarity under 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 Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
(holding that the letters "www" are not distinct in the
"Internet world" and thus the respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark); 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).
Additionally, Respondent’s <ultrapassward.net> domain name is confusingly similar to Complainant’s ULTRAPASSWORDS.COM
mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain name contains Complainant’s
mark in its entirety and substitutes an “a” for an “o,” eliminates an “s,” and
changes the generic top-level domain name from “.com” to “.net”” Thus, Respondent is taking advantage of
common typographical errors, which is insuffiicent to avoid a finding of confusingly
similarity under Policy ¶ 4(a)(i).
Furthermore, the substitution of the generic top-level domain “.net” for
“.com” does not render the domain name sufficiently different to avoid a
finding of confusing similarity under Policy ¶ 4(a)(i). See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); 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.”).
Furthermore,
Respondent’s <myfreepaysitecom.com> and <myfreepaysite.org>
domain names are both confusingly similar to Complainant’s MYFREEPAYSITE.COM
mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain names each
contain Complainant’s mark in its entirety.
The <myfreepaysitecom.com> domain name only adds the
letters “com” to Complainant’s mark. The
addition of the letters “com” does not sufficently distinguish the disputed
domain name from the mark and thus renders the domain name confusingly similar
to the mark pursuant to Policy ¶ 4(a)(i).
Moreover, Respondent’s <myfreepaysite.org> domain name
contains Complainant’s mark in its entirety and simply changes the generic
top-level domain from “.com” to “.org.”
The changing of a generic top-level domain name does not avoid a finding
of confusing similarity under Policy ¶ 4(a)(i).
See Dow Jones &
Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that
the deliberate introduction of errors or changes, such as the addition of a
fourth “w” or the omission of periods or other such “generic” typos do not
change respondent’s infringement on a core trademark held by the complainant); see
also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding
that the domain name <microsoft.org> is identical to the complainant’s
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <myfreepaysitecom.com>, <myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>, and <wwwultraxxxpasswords.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. 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”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <myfreepaysitecom.com>, <myfreepaysite.org>,
<ultraxxxpassword.net>, <ultrapassward.net>, or
<wwwultraxxxpasswords.com> domain names. The WHOIS information identifies Respondent
as “Lepanto,” and Complainant has alleged that Respondent has no rights or
legitimate interests in the ULTRAPASSWORDS.COM, ULTRAXXXPASSWORDS.COM, MYFREEPAYSITE.COM marks. The Panel cannot find any other evidence in
the record suggesting that Respondent is commonly known by the domain names. Therefore, the Panel concludes that
Respondent is not commonly known by the <myfreepaysitecom.com>, <myfreepaysite.org>,
<ultraxxxpassword.net>, <ultrapassward.net>, or
<wwwultraxxxpasswords.com> domain names pursuant to
Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
Respondent is using the <myfreepaysitecom.com>, <myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>, and <wwwultraxxxpasswords.com> domain names to attract Internet users to a website that offers links to other adult entertainment service sites, including links to Complainant’s competitors. Presumably, Respondent receives referral fees for each redirected Internet user. Thus, Respondent’s use of the domain name to redirect Internet users to competing websites, presumably for commercial gain, does not constitute 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <myfreepaysitecom.com>, <myfreepaysite.org>,
<ultraxxxpassword.net>, <ultrapassward.net>, and
<wwwultraxxxpasswords.com> domain names to redirect Internet
users to a website that offers third-party links to Complainant’s competitors
for adult entertainment services. This
use of the disputed domain name is likely to disrupt Complainant’s business by
diverting business away from Complainant.
Therefore, the Panel finds that Respondent’s registration and use of the
<myfreepaysitecom.com>, <myfreepaysite.org>,
<ultraxxxpassword.net>, <ultrapassward.net>, and
<wwwultraxxxpasswords.com> domain names constitute bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent’s use of the <myfreepaysitecom.com>,
<myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>,
and <wwwultraxxxpasswords.com> domain names, which are confusingly
similar to Complainant’s ULTRAPASSWORDS.COM, ULTRAXXXPASSWORDS.COM, and MYFREEPAYSITE.COM
marks,
is likely to cause confusion among customers searching for Complainant’s online
music services. Furthermore, Respondent
presumably profits from this confusion by receiving referral fees for each
Internet user it redirects to other websites.
The Panel finds that such registration and use of the disputed domain
names consitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Toyota
Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb.
Forum
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 <myfreepaysitecom.com>, <myfreepaysite.org>, <ultraxxxpassword.net>, <ultrapassward.net>, and <wwwultraxxxpasswords.com domain names be TRANSFERRED from Respondent to Complainant.
Honorable
Dated:
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum