national arbitration forum

DECISION

Cybertania, Inc. v. Chesterton Holdings

Claim Number: FA0705000990499

PARTIES

Complainant is Cybertania, Inc. (“Complainant”), represented by Leo Radvinsky, 2123 Warwick Lane, Glenview, IL 60026-5743. Respondent is Chesterton Holdings (“Respondent”), 419 North Larchmont Blvd #339, Los Angeles, CA 90004.

REGISTRAR AND DISPUTED DOMAIN NAMES

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 21, 2007.

On May 21, 2007, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lutrapasswords.com>, <ultrapasswotds.com>, <ultrapasswordl.com>, <ultrapassavord.com>, <ultrapasspord.com>, <ultrapassweord.com>, <ultrapasswood.com>, <ultrapasswora.com>, <ultrapasport.com>, <ultrapassvorld.com>, <ultrapassworlt.com>, <ultrarassword.com>, <ultrapassworf.com>, <myfreepaidsites.com>, <freepayside.com>, <myfreepornpaysite.com>, <myfreesitepay.com>, <myfreepaidside.com>, <myfreepagsite.com> and <myfreepapysite.com> domain names are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 May 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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 password@lutrapasswords.com, postmaster@ultrapasswotds.com, postmaster@ultrapasswordl.com, postmaster@ultrapassavord.com, postmaster@ultrapasspord.com, postmaster@ultrapassweord.com, postmaster@ultrapasswood.com, postmaster@ultrapasswora.com, postmaster@ultrapasport.com, posmtaster@ultrapassvorld.com, postmaster@ultrapassworlt.com, posmaster@ultrarassword.com, posmaster@ultrapassworf.com, postmaster@myfreepaidsites.com, postmaster@freepayside.com, postmaster@myfreepornpaysite.com, postmaster@myfreesitepay.com, postmaster@myfreepaidside.com, postmaster@myfreepagsite.com and postmaster@myfreepapysite.com by e-mail.

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

On June 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <lutrapasswords.com>, <ultrapasswotds.com>, <ultrapasswordl.com>, <ultrapassavord.com>, <ultrapasspord.com>, <ultrapassweord.com>, <ultrapasswood.com>, <ultrapasswora.com>, <ultrapasport.com>, <ultrapassvorld.com>, <ultrapassworlt.com>, <ultrarassword.com>, and <ultrapassworf.com> domain names are confusingly similar to Complainant’s ULTRAPASSWORDS.COM. Respondent’s <myfreepaidsites.com>, <freepayside.com>, <myfreepornpaysite.com>, <myfreesitepay.com>, <myfreepaidside.com>, <myfreepagsite.com> and <myfreepapysite.com> domain names are confusingly similar to Complainant’s MYFREEPAYSITE.COM marks.

2. Respondent does not have any rights or legitimate interests in the <lutrapasswords.com>, <ultrapasswotds.com>, <ultrapasswordl.com>, <ultrapassavord.com>, <ultrapasspord.com>, <ultrapassweord.com>, <ultrapasswood.com>, <ultrapasswora.com>, <ultrapasport.com>, <ultrapassvorld.com>, <ultrapassworlt.com>, <ultrarassword.com>, <ultrapassworf.com>, <myfreepaidsites.com>, <freepayside.com>, <myfreepornpaysite.com>, <myfreesitepay.com>, <myfreepaidside.com>, <myfreepagsite.com> and <myfreepapysite.com> domain names.

3. Respondent registered and used the <lutrapasswords.com>, <ultrapasswotds.com>, <ultrapasswordl.com>, <ultrapassavord.com>, <ultrapasspord.com>, <ultrapassweord.com>, <ultrapasswood.com>, <ultrapasswora.com>, <ultrapasport.com>, <ultrapassvorld.com>, <ultrapassworlt.com>, <ultrarassword.com>, <ultrapassworf.com>, <myfreepaidsites.com>, <freepayside.com>, <myfreepornpaysite.com>, <myfreesitepay.com>, <myfreepaidside.com>, <myfreepagsite.com> and <myfreepapysite.com> domain names in bad faith.

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

FINDINGS

Complainant, Cybertania, Inc., owns and operates two of the most popular and largest adult websites on the Internet. In connection with the provision of these services, Complainant has registered the MYFREEPAYSITE.COM (Reg. No. 3,129,466 issued August 15, 2006 and filed August 23, 2005) and ULTRAPASSWORDS.COM (Reg. No. 2,741,422 issued July 29, 2003) marks with the United States Patent and Trademark Office (“USPTO”).

Respondent registered the <myfreepapysite.com> domain name on July 23, 2006, the <myfreepagsite.com> domain name on October 27, 2005, the <myfreepaidside.com> domain name on January 5, 2006, the <myfreesitepay.com> domain name on May 12, 2006, the <myfreepornpaysite.com> domain name on November 30, 2005, the <freepayside.com> domain name on December 14, 2005, the <myfreepaidsites.com> domain name on July 16, 2006, the <ultrapassworf.com> domain name on June 27, 2006, the <ultrarassword.com> domain name on April 25, 2006, the <ultrapassworlt.com> domain name on November 14, 2005, the <ultrapassvorld.com> domain name on January 25, 2006, the <ultrapasport.com> domain name on December 22, 2005, the <ultrapasswora.com> domain name on February 21, 2006, the <ultrapasswood.com> domain name on May 28, 2006, the <ultrapassweord.com> domain name on August 14, 2006, the <ultrapasspord.com> domain name on April 27, 2006, the <ultrapassavord.com> domain name on December 15, 2005, the <ultrapasswordl.com> domain name on July 27, 2006, the <ultrapasswotds.com> domain name on July 2, 2006, and the <lutrapasswords.com> domain name on August 3, 2006. The disputed domain names resolve to search engine websites displaying links to third-party websites as well as advertising for competitors of Complainant.

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 avouches rights in the MYFREEPAYSITE.COM and ULTRAPASSWORDS.COM marks through registration with the USPTO. The Panel finds that Complainant’s timely registration with the USPTO and subsequent use of the MYFREEPAYSITE.COM and ULTRAPASSWORDS.COM marks sufficiently establishes rights in the marks in accordance with Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (the panel held that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also 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.”).

Although some of the disputed domain names were registered before Complainant registered the MYFREEPAYSITE.COM mark with the USPTO, the Panel finds that Complainant’s rights in the mark date back to the date the registration was filed. See 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); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

Complainant alleges that Respondent’s <lutrapasswords.com>, <ultrapasswotds.com>, <ultrapasswordl.com>, <ultrapassavord.com>, <ultrapasspord.com>, <ultrapassweord.com>, <ultrapasswood.com>, <ultrapasswora.com>, <ultrapasport.com>, <ultrapassvorld.com>, <ultrapassworlt.com>, <ultrarassword.com>, and <ultrapassworf.com> domain names are confusingly similar to Complainant’s ULTRAPASSWORDS.COM mark. The disputed domain names all contain typographical variations of Complainant’s mark. Many of the disputed domain names vary from the protected marks by altering or eliminating a single letter. The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark for purposes of Policy ¶ 4(a)(i). See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark).

Complainant asseverates that Respondent’s <myfreepaidsites.com>, <freepayside.com>, <myfreepornpaysite.com>, <myfreesitepay.com>, <myfreepaidside.com>, <myfreepagsite.com> and <myfreepapysite.com> domain names are confusingly similar to Complainant’s MYFREEPAYSITE.COM marks. The <myfreepornpaysite.com> domain name contains Complainant’s mark in its entirety and adds the descriptive term “porn,” which has an obvious relationship to Complainant’s business. The other disputed domain names are typographical variations of Complainant’s mark. The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark for purposes of Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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

Rights or Legitimate Interests

In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that this Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See 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).

The disputed domain names resolve to websites offering links to third-party, commercial websites, as well as advertising for Complainant’s competitors. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Complainant asseverates that Respondent is not commonly known by the disputed domain names. A review of Respondent’s WHOIS information lists “Chesterton Holdings” as the registrant of the disputed domain names. In light of the lack of countervailing evidence, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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>.”).

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

Registration and Use in Bad Faith

Presumably, Respondent receives monetary benefit from its purposeful misdirection of unsuspecting Internet users, as well as from its use of advertising of Complainant’s competitors. Further, Respondent’s use is likely to create confusion among those same unsuspecting Internet users as to the source and affiliation of the resulting websites. The Panel finds that Respondent’s use amounts to an attraction for commercial gain, which evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

Respondent’s use of domain names that are typographically similar to Complainant’s protected marks is indicative of a technique called “typosquatting.” Typosquatting is the purposeful misdirection of Internet traffic through the use of registering typographical variations of a protected mark with the intent of profiting off of the notoriety of the mark. The Panel finds that typosquatting is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use)

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <lutrapasswords.com>, <ultrapasswotds.com>, <ultrapasswordl.com>, <ultrapassavord.com>, <ultrapasspord.com>, <ultrapassweord.com>, <ultrapasswood.com>, <ultrapasswora.com>, <ultrapasport.com>, <ultrapassvorld.com>, <ultrapassworlt.com>, <ultrarassword.com>, <ultrapassworf.com>, <myfreepaidsites.com>, <freepayside.com>, <myfreepornpaysite.com>, <myfreesitepay.com>, <myfreepaidside.com>, <myfreepagsite.com> and <myfreepapysite.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: June 28, 2007

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