SparkPeople Inc. v. Apex Domains c/o John Barry
Claim Number: FA0604000679491
Complainant is SparkPeople Inc. (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Apex Domains c/o John Barry (“Respondent”), 34 West 49 St, New York, NY 10019.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sparkpeopel.com> and <sparkpoeple.com>, registered with Enom, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 13, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sparkpeopel.com> and <sparkpoeple.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@sparkpeopel.com and postmaster@sparkpoeple.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 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sparkpeopel.com> and <sparkpoeple.com> domain names are confusingly similar to Complainant’s SPARKPEOPLE mark.
2. Respondent does not have any rights or legitimate interests in the <sparkpeopel.com> and <sparkpoeple.com> domain names.
3. Respondent registered and used the <sparkpeopel.com> and <sparkpoeple.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SparkPeople Inc., has continuously operated an online weight management and wellness program at the <sparkpeople.com> domain name since February 2000. Complainant has spent a great deal of money, time and effort marketing and promoting its services under the SPARKPEOPLE mark around the world. Over 500,000 unique visitors visit Complainant’s website each month, and Complainant has over 350,000 subscribers. According to a January 2006 survey by Hitwise, an online competitive intelligence service, Complainant’s website is the fastest growing weight loss website.
Complainant holds trademark registrations for the SPARKPEOPLE mark in Australia (Reg. No. 1,991,741 issued June 30, 2005, filed May 12, 2004) and the European Community (Reg. No. 003817582 issued July 25, 2005, filed April 30, 2004). Complainant has filed for trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Serial No. 76/269,328 filed June 8, 2001) and the Canadian Intellectual Property Office (“CIPO”) (Serial No. 1,219,262 filed June 4, 2004).
Respondent registered the disputed domain names on
February 18, 2005 and uses them to redirect Internet users to a website at the
<eprescriptions.com> domain name, which provides health and weight loss
information in direct competition with Complainant. Respondent’s website also contains product information on the
prescription drug, Xenical, a drug that Complainant does not endorse.
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.
Because Complainant has registered the SPARKPEOPLE mark with
the relevant authorities in Australia and the European Community, Complainant
has established rights in the mark pursuant to Policy ¶ 4(a)(i). Despite Respondent’s registration of the
disputed domain names on February 18, 2005, before Complainant was issued its
trademark registrations, Complainant’s rights in the SPARKPEOPLE mark date back
to the filing dates in 2004, and thus Complainant’s rights in the mark predate
Respondent’s rights in the disputed domain name. 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); see also Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date).
The disputed domain names are confusingly similar to Complainant’s SPARKPEOPLE mark because both contain the entire mark and merely transpose letters, thereby misspelling the mark. Panels have held that the mere misspelling of a mark in a domain name does not sufficiently distinguish a domain name from a mark under 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 Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark). Therefore, Respondent’s <sparkpeopel.com> and <sparkpoeple.com> domain names are confusingly similar to Complainant’s SPARKPEOPL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the 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). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a presumption
that Respondent has no rights or legitimate interests in the disputed domain
names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
The WHOIS information lists “Apex Domains c/o John Barry” as
the registrant of the disputed domain names, and there is no other evidence in
the record to suggest that Respondent is commonly known by the disputed domain
names. Therefore, Respondent has not
demonstrated rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no
rights or legitimate interests in domain names because it is not commonly known
by the complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a
legitimate noncommercial or fair use); see also Great S. Wood Preserving, Inc. v.
TFA Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the
domain name <greatsouthernwood.com> where the respondent linked the
domain name to <bestoftheweb.com>).
Respondent’s domain names resolve to a website at the <eprescriptions.com> domain name that offers weight loss and wellness services that directly compete with Complainant. Such use of the disputed domain names for commercial gain by misdirecting Internet users seeking Complainant’s weight loss and wellness services under the SPARKPEOPLE mark to another website offering competing services indicates that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See 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); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain names, which are confusingly similar to Complainant’s SPARKPEOPLE mark, resolve to the website of a direct competitor of Complainant. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. Here, Respondent is also redirecting Internet users seeking Complainant’s products and services to a competing website for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s SPARKPEOPLE mark, and profiting from the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
In addition, the Panel finds that Respondent has violated Policy ¶ 4(b)(iii) by registering and using the disputed domain names to misdirect Internet users to a competing website at the <eprescriptions.com> domain name. Such use provides evidence that Respondent has registered and used the disputed domain name for the purpose of disrupting Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Moreover, Respondent’s various misspellings of Complainant’s SPARKPEOPLE mark in the disputed domain names indicate that Respondent is typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
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 <sparkpeopel.com> and <sparkpoeple.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 25, 2006
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