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Generic Top Level Domain Name (gTLD) Decisions |
InfoSpace, Inc. v. Vince Clark d/b/a
Digitel Telecom
Claim
Number: FA0309000198017
Complainant is InfoSpace, Inc., Bellevue, WA, USA
(“Complainant”) represented by Gerard A.
Taylor, of Stokes Lawrence, P.S, 800 Fifth Ave., Suite 4000, Seattle, WA 98104. Respondent is Vince Clark d/b/a Digitel Telecom, Spaunton Lodge, Hutton
le Hole,York, YO626UN Great Brittain (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dogpile.info>, registered with R139-Lrms.
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 (the "Forum")
electronically on September 24, 2003;
the Forum received a hard copy of the
Complaint on September 26, 2003.
On
September 25, 2003, R139-Lrms confirmed by e-mail to the Forum that the domain
name <dogpile.info> is registered with R139-Lrms and that
Respondent is the current registrant of the name. R139-Lrms has verified that
Respondent is
bound by the R139-Lrms 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 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
October 22, 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 postmaster@dogpile.info 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
October 27, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis
E. Condon 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 <dogpile.info>
domain name is identical to Complainant’s DOGPILE mark.
2. Respondent does not have any rights or
legitimate interests in the <dogpile.info> domain name.
3. Respondent registered and used the <dogpile.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
InfoSpace, Inc., is a global provider of wireless and Internet software and
application services to wireless and broadband
providers. Among other things,
Complainant provides directory services offering access to information about
various subjects via
the Internet. Pursuant to these business practices,
Complainant has both used in commerce and obtained several trademark
registrations
for the DOGPILE mark (e.g. U.S. Reg. No. 2,456,655,
registered on June 5, 2001) in relation to computer programs and Internet search
services worldwide. Along
with its use of the DOGPILE mark in commerce since
1996, Complainant has registered the <dogpile.com> and
<dogpile.net>
domain names.
Respondent,
Vince Clark d/b/a Digitel Telecom, registered the <dogpile.info>
domain name on October 13, 2001, without license or authorization to use
Complainat’s DOGPILE mark for any purpose. Respondent uses
the disputed domain
name to redirect Internet users to an adult-oriented website, which also
displays hyperlinks to additional adult-oriented
content.
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 has
established rights in the DOGPILE mark through registration of the mark with
the U.S. Patent and Trademark Office,
as well as through use of the mark in
commerce. See 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 <dogpile.info>
domain name is identical to
Complainant’s DOGPILE mark, as the top-level domain “.info” is irrelevant when
analyzing a domain name
under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); 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").
Accordingly, the
Panel finds that the <dogpile.info> domain name is identical to Complainant’s DOGPILE mark under Policy ¶
4(a)(i).
Respondent is
using the <dogpile.info> domain
name to redirect unsuspecting Internet users to adult-oriented
content. Respondent’s unauthorized use of Complainant’s DOGPILE mark for
these
illegitimate purposes is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i). As Respondent presumably
receives referral fees
or commissions for each misdirected Internet user, its use is also not a legitimate
noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii).
Thus, both of these Policy “safe harbors” are inapplicable to Respondent in
this dispute. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) (finding that the use of the disputed domain name in
connection with pornographic images and links
“tarnished and diluted”
Complainant’s mark and this was evidence that Respondent had no rights or
legitimate interests in the disputed
domain name); see also Paws, Inc. v.
Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use
of a domain name that is confusingly similar to an established mark
to divert
Internet users to an adult-oriented website “tarnishes Complainant’s mark and
does not evidence noncommercial or fair use
of the domain name by a
respondent”).
Respondent
identifies itself as either “Vince Clark” or “Digitel Telecom” in its WHOIS
contact information, and does not appear to
have any trademark rights in the
DOGPILE mark. Thus, the Panel holds that Respondent is not “commonly known by”
the disputed domain
name pursuant to Policy ¶ 4(c)(ii), making this “safe
harbor” provision inapplicable in this dispute as well. See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known
by the
domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<dogpile.info> domain name
under Policy ¶ 4(a)(ii).
As stated above,
Respondent presumably receives commissions from adult-oriented advertisers for
those Internet users that it attracts
to the disputed domain name via its
unauthorized use of the DOGPILE mark. As Respondent’s use of Complainant’s mark
creates a likelihood
of confusion as to the source or sponsorship of the
disputed domain name for commercial gain, Respondent’s activities evidence bad
faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See
Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers
rely on misleading domain names to attract users by
confusion, in order to
generate revenue from click-through advertising, mouse-trapping, and other
pernicious online marketing techniques”);
see also Six Continents Hotels,
Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“[W]hatever the motivation
of Respondent, the diversion of the domain name to a pornographic site
is
itself certainly consistent with the finding that the Domain Name was
registered and is being used in bad faith”).
The Panel thus
finds that Respondent registered and used the <dogpile.info> domain name in bad faith, and that Policy ¶
4(a)(iii) is 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 <dogpile.info> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
November 4, 2003, 2003
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