Generic Top Level Domain Name (gTLD) Decisions

DECISION

InfoSpace, Inc. v. TBD Entertainment

Claim Number:  FA0306000165120

PARTIES

Complainant is InfoSpace, Inc., Bellevue, WA (“Complainant”) represented by Shannon M. Jost and Leslie C. Ruiter, of Stokes Lawrence, P.S.  Respondent is TBD Entertainment, Tampa, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwdogpile.net>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 20, 2003; the Forum received a hard copy of the Complaint on June 23, 2003.

On June 23, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <wwwdogpile.net> 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 June 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 14, 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@ wwwdogpile.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 July 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.   Respondent’s <wwwdogpile.net> domain name is confusingly similar to Complainant’s DOGPILE mark.

2.   Respondent does not have any rights or legitimate interests in the <wwwdogpile.net> domain name.

3.   Respondent registered and used the <wwwdogpile.net> domain name in bad faith.

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

FINDINGS

Complainant, InfoSpace, Inc., is a preeminent global provider of wireless and Internet software and application services to the leading wireless and broadband providers, websites and merchant resellers around the world.  Among other things, Complainant provides directory services offering access to information about various subjects via the Internet, provides search engines for obtaining data on the Internet and provides for brokerage of electronic commerce transactions conducted via the Internet.

Complainant holds United States Patent and Trademark Office (“USPTO”) Registration Numbers 2,456,655, registered June 5, 2001, and 2,401,276, registered November 7, 2000, for the DOGPILE mark.  Both USPTO Registration Numbers for the DOGPILE mark are listed on the Principal Register.  Complainant uses its registered mark in connection with the services it offers on the Internet.

Complainant is also the registrant of the <dogpile.com> and <dogpile.net> domain names.  Complainant has offered its services in connection with the well-known DOGPILE mark and <dogpile.com> and <dogpile.net> domain names since at least as early as 1996.

Respondent, TBD Entertainment, registered the <wwwdogpile.net> domain name on May 31, 2003.  Respondent is using the disputed domain name to link Internet users to websites that “mousetrap” them by rapidly serving pop-up advertisements, some with adult content.

Three days prior to Respondent registering the <wwwdogpile.net> domain name, Complainant obtained an order transferring the domain names <wwwinfospace.net> and <inforspace.net>, also registered by Respondent, to Complainant.  See InfoSpace, Inc. v. TBD Entertainment, FA 153627 (Nat. Arb. Forum May 28, 2003).

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.

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 has established rights in the DOGPILE mark through registration with the USPTO and continuous use in commerce since 1996.  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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Respondent’s <wwwdogpile.net> domain name is confusingly similar to Complainant’s DOGPILE mark.  Respondent merely adds “www” to Complainant’s entire mark, which does not create a domain name that is distinct from Complainant’s mark.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error [eliminating the period between the www and the domain name] that users commonly make when searching on the Internet”); see also 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established.

Rights or Legitimate Interests

Respondent has failed to submit a Response to the Panel.  By not submitting a Response, Respondent has failed to offer any evidence showing that it has rights or legitimate interests in the disputed domain name.  In addition, the Panel will accept as true all inferences and allegations submitted by Complainant.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where 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”); 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is capitalizing on misspelled versions of Complainant’s DOGPILE mark by linking Internet users to websites that subject them to pop-up advertisements.  Respondent’s diversionary use of the <wwwdogpile.net> domain name to profit from pop-up advertisements is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of domain names pursuant to Policy  ¶ 4(c)(iii).  Furthermore, Respondent’s use of a typosquatted version of Complainant’s mark by itself is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.  See Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also 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”).

The WHOIS contact information for the <wwwdogpile.net> domain name lists TBD Entertainment as the registrant, the administrative contact and the technical contact.  Thus, nothing in the WHOIS contact information supports a finding that Respondent is commonly known by the <wwwdogpile.net> domain name.  Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.  See 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); 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 established.

Registration and Use in Bad Faith

The factors listed under Policy ¶ 4(b) are not exclusive.  Thus, the Panel chooses to look to circumstances other than those listed under Policy ¶ 4(b) to determine whether Respondent registered and used the <wwwdogpile.net> domain name in bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

The UDRP was specifically designed to remedy instances of abusive registration of domain names including situations where registrants register a typosquatted version of another’s mark.  Merely adding the “www” prefix to Complainant’s DOGPILE mark evidences bad faith in itself.  Thus, the Panel finds that Respondent registered and used the <wwwdogpile.net>  domain name in bad faith.  See 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 Black & Decker Corp. v. 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).

Furthermore, the fact that Respondent registered a typosquatted version of Complainant’s DOGPILE mark as a domain name three days after having an Order rendered against him to transfer two other typosquatted domain names to Complainant, is evidence that Respondent was aware of Complainant’s rights in the DOGPILE mark when it registered the <wwwdogpile.net> domain name.  Such actual knowledge of Complainant’s rights in the DOGPILE mark evidences bad faith registration of the disputed domain name.  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 established.

DECISION

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

Accordingly, it is Ordered that the <wwwdogpile.net> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated: August 7, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/795.html