DECISION

InfoSpace, Inc. v. Justin Jacobs

Claim Number:  FA0307000175200

PARTIES

Complainant is InfoSpace, Inc., Bellevue, WA (“Complainant”) represented by Shannon M. Jost and Leslie C. Ruiter, of Stokes Lawrence, P.S.  Respondent is Justin Jacobs, San Francisco, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dogpilekeys.com>, registered with Go Daddy Software, Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 28, 2003; the Forum received a hard copy of the Complaint on July 31, 2003.

On July 30, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <dogpilekeys.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 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@dogpilekeys.com 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 September 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <dogpilekeys.com> domain name is confusingly similar to Complainant’s DOGPILE mark.

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

3. Respondent registered and used the <dogpilekeys.com> domain name in bad faith.

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

FINDINGS

Complainant is a pre-eminent global provider of wireless and Internet software and application services to the leading wireless and broadband providers, websites and merchant resellers around the world.  Some of Complainant’s Internet services include providing directory services, providing search engines and brokering electronic commerce transactions.

Complainant, InfoSpace, Inc. is the holder of United States Patent and Trademark Registration No. 2,456,655 (registered on the Principal Register on June 5, 2001) and Registration No. 2,401,276 (registered on the Principal Register on November 7, 2000) for the DOGPILE mark.  In addition, Complainant has been using the DOGPILE mark since at least as early as November 1996, in connection with search services on the Internet in the United States and worldwide.

Respondent registered the <dogpilekeys.com> domain name on June 13, 2003.  Respondent is neither affiliated with Complainant nor has Respondent been granted the right or permission to use the DOGPILE mark.  Respondent has not operated any business in connection with the disputed domain name or connected it to an operative website.

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 United States Patent and Trademark Office 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).  A recent Panel decision under the Policy has recognized Complainant’s status as a well-known provider of the services offered under the DOGPILE mark and the good will Complainant has acquired in the DOGPILE mark and domain names.  See InfoSpace, Inc. v. Kristanto Siswanto, FA 135607 (Nat’l Arb. Forum January 20, 2003).

The <dogpilekeys.com> domain name is confusingly similar to Complainant’s DOGPILE mark.  Respondent has added the generic word “keys” and the top-level domain “.com” to Complainant’s entire mark.  The DOGPILE mark is the primary, distinctive element in the <dogpilekeys.com> domain name.  Therefore, the Panel finds that the disputed domain name is not sufficiently distinguishable from Complainant’s DOGPILE mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Since Respondent has not submitted a Response, Respondent has failed to offer any evidence showing that it has rights or legitimate interests in the disputed domain name.  Furthermore, the Panel accepts as true all inferences and allegations submitted by Complainant in its Complaint.  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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); 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).

There is no evidence before the Panel indicating that Respondent is commonly known by the <dogpilekeys.com> domain name.  In addition, Complainant has not authorized Respondent to use the DOGPILE mark.  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name.  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).

Since registering the <dogpilekeys.com> domain name, Respondent has not used it in connection with any business or with an operative website.  In addition, Respondent has not provided any evidence demonstrating preparations to use the <dogpilekeys.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the disputed domain name where there is no proof that Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and Respondent is not commonly known by the disputed domain name).

Accordingly, the Panel finds the Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

The factors listed under Policy ¶ 4(b) that evidence registration and use in bad faith are illustrative, rather than exclusive.  Therefore, the Panel may choose to look to circumstances other than those listed under Policy ¶ 4(b) to determine whether Respondent registered and is using the <dogpilekeys.com> domain name in bad faith.  Although this case is a close call because Respondent registered the <dogpilekeys.com> domain name one and one-half months prior to the filing of this claim, the Panel concludes that there is sufficient evidence to find bad faith by examining the totality of the circumstances surrounding Respondent’s use and registration of the <dogpilekeys.com> domain name.  See Digi Int’l Inc. 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 CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Specifically, Respondent registered a domain name that is confusingly similar to Complainant’s DOGPILE mark.  In addition, based on the lack of evidence provided by Respondent showing that it is commonly known by the <dogpilekeys.com> domain name, the Panel infers that Respondent is not commonly known by the disputed domain name.  Furthermore, Respondent has failed to Respond to Complainant’s Complaint to assert any evidence that it had any rights and legitimate interests in the disputed domain name and that it did not register and use the disputed domain name in bad faith.  Thus, since there is no evidence before the Panel to rebut Complainant’s allegations that Respondent registered and used the disputed domain name in bad faith, the Panel finds that Respondent registered and used the disputed domain name in bad faith.  See Strum v. Nordic Net Exch.  AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to respond to the Panel's additional requests warranted a finding for Complainant); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

Furthermore, the UDRP was designed to remedy instances of abusive registration of domain names including instances where a registrant has not used the domain name and there is no evidence showing that the registrant could have registered and used the domain name for a non-infringing purpose.  In this situation, Respondent has not made any use of the <dogpilekeys.com> domain name, nor does it indicate any plans or preparations to use the disputed domain name in the future.  Thus, the Panel infers that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Accordingly, the Panel finds the 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 <dogpilekeys.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 15, 2003

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