DECISION

InfoSpace, Inc. v. TBD Entertainment

Claim Number:  FA0304000153627

PARTIES

Complainant is InfoSpace, Inc., Bellvue, WA (“Complainant”) represented by Shannon M. Jost of Stokes Lawrence PS. Respondent is TBD Entertainment, Tampa, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wwwinfospace.net> and <inforspace.net>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 3, 2003; the Forum received a hard copy of the Complaint on April 4, 2003.

On April 3, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain names <wwwinfospace.net> and <inforspace.net> are registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the names. 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 April 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@wwwinfospace.net and postmaster@inforspace.net 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 May 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <wwwinfospace.net> and <inforspace.net>, are confusingly similar to Complainant’s INFOSPACE mark.

2. Respondent has no rights or legitimate interests in the <wwwinfospace.net> and <inforspace.net> domain names.

3. Respondent registered and used the <wwwinfospace.net> and <inforspace.net> domain names in bad faith.

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

FINDINGS

Complainant, InfoSpace, Inc., has been using the INFOSPACE trademark since at least 1995 and holds several trademark registrations for the mark (e.g.,   U.S. Reg. No. 2,206,397, registered on December 1, 1998). Complainant has also registered the INFOSPACE mark in over 18 countries worldwide.

Under the INFOSPACE mark, Complainant provides wireless and Internet software and application services to global wireless and broadband providers. Complainant provides directory and listing services offering access to information about various subjects across the Internet, including the use of online search engines and computer programs related to the accessing of databases containing information available on computer networks. Pursuant to its business, Complainant operates websites at the <infospace.com> and <infospace.net> domain names.

Both of the disputed domain names are registered to an entity known as “TBD Entertainment.” Prior to this dispute, Complainant sent a cease-and-desist letter to this entity requesting transfer of the domain names. In response to this letter, TBD Entertainment informed Complainant that it had not registered the disputed domain names and did not own them.

Looking at the WHOIS information for the disputed domain names, the Panel notes that the email address for the administrative and technical contact, the same email address used by the Registrar to authenticate and communicate with a domain name Registrant, is info@x2gaem.com. The <x2gaem.com> domain name is registered to someone going by the name of “Taeho Kim.” Therefore, it appears that “Taeho Kim,” and not TBD Enterprises, registered the disputed domain names.

This “Taeho Kim” has been brought before previous administrative Panels. In one dispute, he or she was joined as a respondent with an entity known as “BigDoggie.Net.” In another, he or she represented that entity. The link between the supposed “real” domain name registrant and “BigDoggie.Net” is an important one, as Respondent in the present dispute also does business as “BigDoggie.Net,” leading the Panel to conclude that “Taeho Kim” is either an alias or an associate of Respondent. Based on these findings, the Panel determines that despite its protestations to the contrary, Respondent is indeed the registrant of the disputed domain names. 

Respondent registered the <wwwinfospace.net> and <inforspace.net> domain names on October 8, 2002, and is not licensed or authorized to use Complainant’s INFOSPACE mark for any purpose. Respondent uses the disputed domain names to “mousetrap” Internet users into viewing a series of pop-up advertisements. Internet users attempting to close the pop-up advertisements are subsequently subjected to an additional series of advertisements, some of which promote sexually explicit content.

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 will draw such inferences as the Panel 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the INFOSPACE mark through registration of the mark with the U.S. Patent and Trademark Office, registration of the mark with the appropriate governmental agencies in over 18 additional nations worldwide, and by continuous and widespread use of the mark in commerce.

The first domain name registered by Respondent, <wwwinfospace.net>, is confusingly similar to Complainant’s INFOSPACE mark. Adding a “www” prefix to a registered mark does not create a distinct domain name as it typifies exactly the type of abusive registrations that the UDRP was designed to remedy. See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark); see also Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

The second domain name registered by Respondent, <inforspace.net>, is confusingly similar to Complainant’s INFOSPACE mark. The addition of the letter “r” to Complainant’s mark does not alleviate any confusing similarity for the purposes of Policy ¶ 4(a)(i). See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to the Complainant’s famous AMERICA ONLINE mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that the <wwwinfospace.net> and <inforspace.net> domain names are confusingly similar to Complainant’s INFOSPACE mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant carries the burden of proving that Respondent has no rights or legitimate interests in the <wwwinfospace.net> and <inforspace.net> domain names. Complainant can meet this burden by showing that Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent.  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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent’s use of the <wwwinfospace.net> and <inforspace.net> domain names does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), as Respondent is merely capitalizing on misspelled versions of Complainant’s mark to divert Internet traffic. Likewise, Respondent’s diversionary use of the domain names to profit from pop-up advertisements is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See RE/MAX Int’l., Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using Complainant’s mark to earn profit from pop-up advertisements); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site”).

Respondent, TBD Entertainment, is not “commonly known by” the disputed domain names, and cannot rely upon Policy ¶ 4(c)(ii) to evidence rights or legitimate interests in the domain names. See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also 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) does not apply).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <wwwinfospace.net> and <inforspace.net> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

While Policy paragraph 4(b) lists four examples of bad faith use and registration of a domain name, this list merely illustrates possible circumstances evidencing bad faith. In this dispute, the Panel will look to the totality of the circumstances surrounding the registration and use of the disputed domain names in determining if Respondent acted in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

The UDRP was designed to remedy circumstances of abusive registration of a domain name and Respondent typosquatted when it registered the <wwwinfospace.net> and <inforspace.net> domain names. This supports findings of bad faith. Merely adding a “www” prefix to Complainant’s mark or misspelling Complainant’s mark permits the Panel to infer that Respondent was aware of Complainant’s rights in the INFOSPACE mark when it registered the disputed domain names. Such registration with actual knowledge of a trademark holder’s rights evidences bad faith registration of the domain names. Capitalizing on the goodwill surrounding Complainant’s mark to profit from pop-up advertisements unrelated to Complainant’s business dilutes Complainant’s mark and constitutes bad faith use of the domain names. See Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with 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 Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).

The Panel thus finds that Respondent registered and used the <wwwinfospace.net> and <inforspace.net> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <wwwinfospace.net> and <inforspace.net> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 28, 2003.

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