Lycos, Inc. v. Interner Power
Claim Number: FA0702000918597
Complainant is Lycos, Inc. (“Complainant”), represented by Anne C. Pareti of Burns & Levinson LLP, 125 Summer Street, Boston, MA 02110. Respondent is Interner Power (“Respondent”), 444 Songhyung-Dong, Dalseo-gu, Daegu 777777, Dalseo-gu Daegu 777777.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lycosmusic.com>, registered with OnlineNIC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 15, 2007; the National Arbitration Forum received a hard copy of the Complaint February 20, 2007.
On February 25, 2007, OnlineNIC confirmed by e-mail to the National Arbitration Forum that the <lycosmusic.com> domain name is registered with OnlineNIC and that Respondent is the current registrant of the name. OnlineNIC verified that Respondent is bound by the OnlineNIC registration agreement and thereby has 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 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 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@lycosmusic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. The domain name that Respondent registered, <lycosmusic.com>, is confusingly similar to Complainant’s LYCOS mark.
2. Respondent has no rights to or legitimate interests in the <lycosmusic.com> domain name.
3. Respondent registered and used the <lycosmusic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lycos, Inc., holds a trademark registration for the LYCOS mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,048,179 issued on March 25, 1997), which has been used in connection with software for searching and retrieving information across a computer network. Additionally, Complainant uses the LYCOS mark in connection with the Lycos Music website, where Internet users can download music, view and download music videos, and engage in other various music- related activities.
Respondent, Interner Power, registered the <lycosmusic.com> domain name May 10, 2002. The domain name forwards Internet users to a generic portal page with links to a variety of music download sites, including links to the sites of Complainant’s competitors.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic evidence in this proceeding that it has rights in the LYCOS mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. Complainant’s registration of its LYCOS mark preceded Respondent’s registration of the <lycosmusic.com> domain name. 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 established rights in the LYCOS 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name that Respondent registered, <lycosmusic.com>, is confusingly similar to Complainant’s LYCOS mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain name contains Complainant’s mark in its entirety, adds the word “music,” which is a specific reference to Complainant’s online music business, and adds the generic top-level domain “.com.” The addition of a generic word associated with Complainant’s business does not sufficiently 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). Furthermore, the addition of a top-level domain does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <lycosmusic.com> domain name. 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 Respondent failed to respond to the Complaint, the Panel assumes that 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”). 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 <lycosmusic.com> domain name. The WHOIS information identifies Respondent as “Interner Power,” and Complainant has alleged that Respondent has no rights or legitimate interests in the LYCOS mark. The Panel cannot find any other evidence in the record suggesting that Respondent is commonly known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <lycosmusic.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Respondent is using the <lycosmusic.com> domain name to attract Internet users to a website that offers links to other music download 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 Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith
in registering and using a domain name that contains in its entirety
Complainant’s protected mark. Respondent
is using the <lycosmusic.com>
domain name to redirect Internet users to a website that displays links to
Complainant’s competitors for music download 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 <lycosmusic.com> domain name constitutes bad faith 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 Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
. .”).
Respondent’s use of the <lycosmusic.com> domain name, which is
confusingly similar to Complainant’s LYCOS mark, 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 name consitutes bad
faith pursuant to Policy ¶ 4(b)(iv). See Toyota Motor
Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used
<land-cruiser.com> to advertise its business, which sold goods in
competition with Complainant. This
establishes bad faith as defined in Policy ¶ 4(b)(iv).”);
see also Qwest Comm’ns Int’l Inc.
v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant
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 <lycosmusic.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 11, 2007.
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