InfoSpace, Inc. v. domains Asia Ventures
Claim Number: FA0310000198909
Complainant is InfoSpace, Inc., Bellevue, WA (“Complainant”) represented by Shannon M. Jost, Leslie C. Ruiter, and Pallavi M. Wahi of Stokes Lawrence, P.S.. Respondent is domains Asia Ventures, Xiamen, Fujian, China “Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dogpileuk.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 30, 2003; the Forum received a hard copy of the Complaint on October 6, 2003.
On October 6, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <dogpileuk.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.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 October 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 28, 2003 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <dogpileuk.com> domain name is confusingly similar to Complainant’s DOGPILE mark.
2. Respondent does not have any rights or legitimate interests in the <dogpileuk.com> domain name.
3. Respondent registered and used the <dogpileuk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides wireless and Internet software and application services to leading wireless and broadband providers, websites, and merchant resellers around the world. Specifically, some of the services provided by Complainant include directory services offering access to information about various subjects via the Internet, search engines for obtaining data on the Internet, and brokerage of electronic commerce transactions conducted via the Internet. Complainant has offered its services in connection with the DOGPILE mark and its <dogpile.com> and <dogpile.net> domain names since at least as early as 1996.
Respondent registered the <dogpileuk.com> domain name on July 17, 2003. When Internet users type in the <dogpileuk.com> domain name, they are connected with a website that features pop-up and banner advertising. The website also offers searching or indexing services.
Respondent has no relationship to Complainant and is not authorized to use the DOGPILE mark or any variations thereof.
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.
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 registered the DOGPILE mark on the Principal Register of the USPTO. Accordingly, the Panel finds that Respondent has established rights in the DOGPILE mark. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s <dogpileuk.com> domain name is confusingly similar to Complainant’s mark. Respondent added the letters “uk” to Complainant’s entire DOGPILE mark. The letters “uk” are likely to be understood by consumers as a geographic identifier for the United Kingdom. The Panel reasonably infers that Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. Thus, Respondent’s addition of the letters “uk” to Complainant’s mark does not materially change the impression of the domain name. Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii). See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark as "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response asserting any circumstances under which the Panel could determine it has rights or legitimate interests in the <dogpileuk.com> domain name. In the absence of a Response, the Panel is hard-pressed to find that Respondent has rights or legitimate interests in the domain name at issue. Thus, the Panel accepts all allegations asserted in the Complaint as true and infers that Respondent lacks any rights and legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).
Respondent is using the <dogpileuk.com> domain name in connection with web searching or indexing services, in direct competition with Complainant. In addition, Respondent is using the domain name to generate traffic to its website for the purpose of generating revenues derived from the pop-up and banner advertisements. The Panel infers that Respondent is obtaining revenue based on the traffic directed to its website and the advertisements displayed in connection with the domain name. The Panel finds that Respondent’s use of the domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services).
Respondent has never been known by or operated a business under the DOGPILE mark or the <dogpileuk.com> domain name. Furthermore, Respondent has no relationship to Complainant and Complainant has not authorized Respondent to use the DOGPILE mark for any purpose. Thus, the Panel concludes that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is likely that Internet users are attracted to Respondent’s website because they mistakenly believe the website located at the <dogpileuk.com> domain name is sponsored by Complainant or Complainant’s United Kingdom affiliate. Further evidencing Respondent’s infringing use, Respondent not only uses Complainant’s entire mark in the <dogpileuk.com> domain name, Respondent also offers searching or indexing services that compete with services offered by Complainant via the Internet. Moreover, as evidenced by the advertisements that appear at Respondent’s website, Respondent is profiting by attracting Internet users to its website. Consequently, the Panel finds that Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s DOGPILE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Thus, the Panel concludes that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Furthermore, Respondent was on constructive notice of Complainant’s rights in the DOGPILE mark. Since Complainant’s DOGPILE mark was registered on the Principal Register of the USPTO prior to Respondent’s registration of the domain name, the Panel presumes that Respondent had knowledge of Complainant’s rights in its mark. Thus, the Panel finds that Respondent registered the <dogpileuk.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Accordingly, 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 <dogpileuk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 10, 2003