Digg Inc. v. Buy Digg Votes c/o Vaja Smigovc
Claim Number: FA0704000964612
Complainant is Digg Inc. (“Complainant”), represented by David
A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buydiggvotes.com>, registered with Netfirms, 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 April 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 20, 2007.
On
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
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 <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.
Complainant, Digg Inc., holds trademark registrations for
the DIGG mark with trademark offices in
Respondent registered
the <buydiggvotes.com>
domain name on
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 DIGG mark under
Policy ¶ 4(a)(i) through registration of the mark in
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.
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
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.
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
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
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.
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:
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