national arbitration forum

 

DECISION

 

Digg Inc. v. Buy Digg Votes c/o Vaja Smigovc

Claim Number: FA0704000964612

 

PARTIES

Complainant is Digg Inc. (“Complainant”), represented by David A. W. Wong, of Barnes & Thornburg LLP, 11 South Meridian Street, Indianapolis, IN 46204-3535.  Respondent is Buy Digg Votes c/o Vaja Smigovc (“Respondent”), Turjaska 57, Preddvor SL4205, SI.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buydiggvotes.com>, registered with Netfirms, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 20, 2007.

 

On April 25, 2007, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <buydiggvotes.com> domain name is registered with Netfirms, Inc. and that Respondent is the current registrant of the name.  Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 April 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 2007 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@buydiggvotes.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 24, 2007, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <buydiggvotes.com> domain name is confusingly similar to Complainant’s DIGG mark.

 

2.      Respondent does not have any rights or legitimate interests in the <buydiggvotes.com> domain name.

 

3.      Respondent registered and used the <buydiggvotes.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Digg Inc., holds trademark registrations for the DIGG mark with trademark offices in Australia (Reg. No. 1,130,438 issued August 17, 2006) and Norway (Reg. No. 200,608,710).  Complainant also holds several pending trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DIGG mark (i.e. Serial No. 78/824,227 filed February 27, 2006 and Serial No. 78/542,038 published for opposition August 8, 2006).  Complainant has also applied for trademark registrations for the DIGG mark in several international jurisdictions that are pending, including Switzerland, Hong Kong, Malaysia, China, Japan, and the European Community.  Complainant has used the DIGG mark in connection with the operation of its social content website since December 1, 2004, and has acquired over one million registered users.  Complainant has registered the <digg.com> domain name, which it uses in connection with its social content services.  Operating under the DIGG mark, Complainant offers Internet consumers the opportunity to submit, review and vote on news and information content.  Complainant’s website then lists in order of the votes the content with links to the website of the submitter where the content originates, which creates more traffic to the submitter’s website with the highest votes.

 

Respondent registered the <buydiggvotes.com> domain name on March 7, 2007.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website selling votes used for the voting system on Complainant’s <digg.com> domain name.  Respondent has created false registrations to obtain votes in order to sell them to a third party who wants to promote its content on Complainant’s <digg.com> domain name by obtaining numerous votes.  Respondent refers to Complainant’s website named for the DIGG mark and states that it would “prefer if DIGG did not know about our business.”  Respondent’s disputed domain name lists the cost of Respondent’s service at $5 to begin a campaign plus an additional $1 per vote.  Respondent offered to enter into negotiations to sell the <buydiggvotes.com> domain name to Complainant via e-mail on April 19, 2007.

                                                                                                          

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the DIGG mark under Policy ¶ 4(a)(i) through registration of the mark in Australia.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).  Complainant’s rights are further supported by the registration of the DIGG mark in Norway and the pending registrations in the United States and other international countries.

 

Respondent’s <buydiggvotes.com> domain name is confusingly similar to Complainant’s DIGG mark because it uses the mark in its entirety and merely adds the words “buy” and “votes” to the mark.  Specifically, the word “votes” describes Complainant’s business, which includes a website displaying content in an order based on the votes of Internet users.  Therefore, the Panel finds that the addition of the words “buy” and “votes” does not sufficiently distinguish the domain name from the mark to avoid a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

 

Respondent also adds the generic top-level domain (“gTLD”) “.com” to the mark.  As panels have previously held, the Panel finds that the addition of a gTLD is irrelevant to determining whether a domain name is confusingly similar pursuant to Policy ¶ 4(a)(i).  See 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.”); 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....").

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant claims that Respondent has no rights or legitimate interest in the <buydiggvotes.com> domain name.  Complainant’s allegations establish a prima facie case, which shifts the burden to Respondent to prove that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  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”).

 

Panels have previously held, as the Panel finds here, that a failure to respond to a complaint not only fails to establish Respondent’s burden, but may also be considered  evidence that Respondent lacks rights or legitimate interests in the domain name.  See 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.”); see also 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).  However, the Panel will consider all evidence in determining whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant contends that Respondent is using the <buydiggvotes.com> domain name to sell votes, available through the creation of false registrations, for use on Complainant’s website under the DIGG mark.  Respondent is commercially benefiting from this use in the form of fees from the sale of votes.  Therefore, the Panel finds that Respondent’s use of the domain name to redirect Internet users to Respondents website to sell votes for Complainant’s voting system under the DIGG mark is not a use in connection with 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 G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

Further, Complainant alleges that Respondent offered to sell the <buydiggvotes.com> domain name to Complainant.  The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant is evidence in and of itself that Respondent lacks rights or legitimate interests in the <buydiggvotes.com> domain name under Policy ¶ (a)(ii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

 

Finally, Respondent offers no evidence and there is no evidence present in the record to indicate Respondent is commonly known by the <buydiggvotes.com> domain name.  Respondent’s WHOIS information identifies Respondent as “Buy Digg Votes c/o Vaja Smigovc.”  While Respondent’s name includes the DIGG mark and the “Buy Digg Votes” part of the domain name, there is no evidence presented in the record to indicate that Respondent is commonly known by either the DIGG mark or the “Buy Digg Votes” portion of the domain name beyond Respondent’s name being similar.  Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the <buydiggvotes.com> domain name under Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has registered and evidence indicates that Respondent is offering to sell the <buydiggvotes.com> domain name to Complainant.  The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

Respondent is using the disputed domain name to redirect Internet users to Respondent’s website selling votes for Complainant’s voting system under the DIGG mark.  Such use by Respondent causes inaccurate vote counts on Complainant’s website, the primary business of which is displaying content in an order based on the number of votes.  Therefore, the Panel finds that Respondent’s use of the <buydiggvotes.com> domain name to sell votes to Complainant’s website constitutes disruption and is evidence of bad faith under Policy ¶ 4(b)(iii).  See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also 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).

 

Finally, Respondent is using the <buydiggvotes.com> domain name to redirect Internet users to Respondent’s website for the assumed profit of Respondent.  The Panel finds that because Respondent’s <buydiggvotes.com> domain name is confusingly similar to Complainant’s DIGG mark, Internet users may become confused as to Complainant’s affiliation with the website.  Respondent is profiting from this confusion though the sale of votes for $5 upfront and an additional $1 per vote.  As a result, Respondent’s use of the <buydiggvotes.com> domain name to redirect Internet users to a website selling votes to Complainant’s website constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority…is bad faith use of a confusingly similar domain name.”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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 <buydiggvotes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

 

Louis E. Condon Panelist

Dated:  June 13, 2007

 

 

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