Generic Top Level Domain Name (gTLD) Decisions
InfoSpace, Inc. v. Kristanto Siswanto
Claim Number: FA0212000135607
Complainant is InfoSpace, Inc., Bellevue, WA, USA (“Complainant”) represented by Shannon M. Jost, of Stokes Lawrence PS. Respondent is Kristanto Siswanto, INDONESIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doggpile.com>, registered with OnlineNIC, Inc.
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 (the “Forum”) electronically on December 1, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.
On December 3, 2002, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain name <doggpile.com> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, 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 December 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002, 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 firstname.lastname@example.org 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 8, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <doggpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark. Respondent does not have any rights or legitimate interests in the <doggpile.com> domain name. Respondent registered and used the <doggpile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, InfoSpace, Inc., has been using the DOGPILE trademark since at least November of 1996, and holds several trademark registrations for the mark (e.g. U.S. Reg. No. 2,456,655, registered on June 5, 2001). Under the DOGPILE mark, Complainant provides Internet software and application services to many wireless and broadband providers, websites, and merchant resellers worldwide. 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 a website at <dogpile.com>, hosting a meta-search engine which serves 4.3 million unique visitors worldwide. Complainant also registered the <dogpile.net> domain name, which redirects Internet users to its original website at <dogpile.com>.
Respondent, Kristanto Siswanto, registered the <doggpile.com> domain name on December 9, 2001, and is not licensed or authorized to use the DOGPILE mark for any purpose. The domain name resolves to a website which includes Internet search functions and banner advertising. Upon receipt of a cease-and-desist letter from Complainant, Respondent offered to sell the domain name registration for $500, claiming that this price reflected the cost Respondent had incurred in an auction for the domain name registration. Respondent refused a counter-offer to sell the domain name registration for $100. When Complainant asked for documentation substantiating these claims of expense, Respondent ceased all communications.
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 DOGPILE mark through registration with the United States Patent and Trademark Office and through widespread promotion of the mark online.
Respondent’s <doggpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark. Respondent has only added an additional “g” to the DOGPILE mark, creating a domain name that is visually and phonetically similar to Complainant’s mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); 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 <doggpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Respondent failed to file a Response in this proceeding and the Panel will take all relevant allegations in the Complaint as evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent failed to invoke any circumstance that could demonstrate rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Further, when Respondent fails to file a Response, the Panel will also accept as true all substantiated allegations put forth in the Complaint and will draw all logical inferences in support of the Complainant. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that the Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent posted a nominal web-searching index at the <doggpile.com> domain name, where it also has posted banner advertisements. The Panel views this as a transparent attempt to capitalize on Complainant’s mark by offering similar services in order to generate revenue from Respondent’s banner advertisements. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not legitimate noncommerical or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).
Respondent’s WHOIS information lists it as “Kristanto Siswanto,” evidence that Respondent is not “commonly known by” the DOGGPILE or <doggpile.com> name. Furthermore, in e-mail correspondence with Respondent, Complainant learned that the reason Respondent registered the disputed domain name was because the domain “gets a lot of traffic daily.” These facts allow the Panel to conclude that Respondent does not qualify for the protections of Policy ¶ 4(c)(ii), as Respondent is not “commonly known by” the name prior to registration of the domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also 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").
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <doggpile.com> domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent uses the <doggpile.com> domain name to provide services in the same field that Complainant operates in under its DOGPILE mark. Given the likelihood of confusion that exists between users of Complainant’s services and those Internet users who are misleadingly directed to the <doggpile.com> domain name, which includes commercial banner advertisements, Respondent’s behavior exemplifies bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of Complainant’s widespread promotional efforts coupled with diversion from Complainant’s site to Respondent’s for competing commercial gain is sufficient evidence of bad faith registration and use).
The Panel also infers that Respondent’s primary purpose in registering the <doggpile.com> domain name was to sell its registration to Complainant. It appears that Respondent patiently waited for Complainant to notice its website, and upon reciept of a cease-and-desist letter, promptly responded with a sale offer for more than its out-of-pocket expenses related to the subject domain name. The fact that Respondent refused to provide any documentation supporting its assertion that $500 was what it paid in registration and hosting costs further supports the conclusion that Respondent intended to profit from the sale of its domain name registration to Complainant. In addition, the fact that Respondent rejected Complainant’s offer of $100 bolsters this conclusion. Respondent’s registration with the intent to sell the registration to Complainant qualifies as bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name registration at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name registration for valuable consideration in excess of any out of pocket costs).
Accordingly, the Panel finds that Respondent registered and used the <doggpile.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <doggpile.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 20, 2003.