|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Lowermybills.com, Inc. v. Michele Dinoia
Claim Number: FA0308000183728
PARTIES
Complainant
is LowerMyBills.com, Inc., Santa
Monica, CA (“Complainant”) represented by Sean
F Heneghan. Respondent is Michele Dinoia, Pineto, TE, Italy (“Respondent”)
represented by Avvocato Valerio Donnini
.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lowermybill.com>,
registered with Core Internet Council of
Registrars.
PANEL
The undersigned certifies that he or she
has acted independently and impartially and to the best of his or her knowledge
has no known
conflict in serving as Panelist in this proceeding.
Timothy
D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 8, 2003; the Forum received
a hard copy of the
Complaint on August 11, 2003.
On
August 12, 2003, Core Internet Council of Registrars confirmed by e-mail to the
Forum that the domain name <lowermybill.com>
is registered with Core Internet Council of Registrars and that the Respondent
is the current registrant of the name. Core
Internet Council of Registrars has verified that Respondent is bound by the Core
Internet Council of Registrars 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 14, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
3, 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@lowermybill.com by e-mail.
A
timely Response was received and determined to be complete on September 3, 2003.
Complainant's Additional Submission was
received on September 8, 2003, and determined to be timely. It was denominated "Complainant's Reply
to Respondent's Response in Accordance with The National Arbitration Forum’s
Supplemental
Rules To ICANN’s Uniform Domain Name Dispute Resolution Policy."
Thereafter Respondent filed a
"Response to Second Additional Written Statement in Accordance with The
Uniform Domain Name Dispute
Resolution Policy and National Arbitration Forum
Supplemental Rules" which was determined to be untimely and in violation
of
Rule #7. I elect to consider this
filing.
Thereafter
Complainant filed a "Complainant's Second Additional Submission in Reply
to Respondent's Additional Submission in
Reply to Respondent's Additional
Submission in Accordance with The Uniform Domain Name Dispute Resolution Policy
and National Arbitration
Forum Supplemental Rules" which was determined to
be untimely in violation of Rule #7. I
elect to consider this filing.
On September 12, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Timothy D.
O’Leary as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant contends that the domain name
<lowermybill.com> is confusingly similar to its LOWERMYBILLS.COM
mark.
2. Respondent has no right or legitimate
interest in this domain name, and
3. The domain name is registered and is
being used in bad faith.
B.
Respondent
Respondent
denies each of these assertions.
C.
Additional Submissions
1. The additional submissions of each party
are considered in this Decision and discussed.
As to the identical and confusingly similar contentions,
Complainant asserts:
Complainant
asserts that the <lowermybill.com>
domain name is confusingly similar to its LOWERMYBILLS.COM mark. Respondent merely omits the letter “s” in
the domain name at issue. Omitting a
letter reflects a very common typographical error.
Complainant
maintains that it is the owner of the LOWERMYBILLS.COM trademark and trade name
in use in connection with the service
of providing comparison shopping
information and additional consumer related information through its
webssite. This mark has been used in
connection with its Internet-based consumer information services since February
7, 2000.
Complainant contends that it has invested
substantially in advertising and promoting its services and has spent
$20,000,000.00 and
invested $1,000,000.00 a month.
Complainant
maintains that it has received over 42,000,000 unique visitors to the website
to date.
Respondent contends that the mark and the
domain name are not confusingly similar and not identical because Complainant's
mark uses
the word "bills" while its domain name is based on the word
"bill". Respondent argues
that for Respondent the use of the word "bill" is used in connection
with the costs of the interest of
the debt with foreign countries for the
highly indebted nations and for Complainant the use of the word
"bills" is necessary
to stress the activity of providing comparison
shopping. This difference, Respondent
states, implies that there is no confusing similarity between the mark and the
domain name.
Next,
Respondent states that the mark and the domain name are generic words and not
distinctive. Complainant therefore
cannot maintain exclusive rights to its mark.
Respondent
also argues that Mr. Dinoia lives in Italy and therefore was not aware of the
existence of Complainant's trademark.
Complainant responds that a generic term
can never be registered as a trademark.
This mark was registered with the U.S. Patent & Trademark Office and
in addition three international government agencies have
registered this mark.
Complainant argues that it has proven
this is a valuable right by showing high volume use of the website and samples
of advertising.
As to Respondent's contention that he had
no notice of this mark, Complainant states that Respondent is in the business
of finding
and selling desirable domain names.
Further, Respondent knows the business and has been found in other cases
to have constructive notice of marks registered even though
he allegedly lives
in Italy.
Complainant argues that in thirteen
previous cases Respondent has been found to use domain names that incorporate
the trademarks of
others. Some of these
cases involved "typo" versions of trademarks, a tactic known as
"typosquatting" and a subset of
cyber piracy. Thus, Complainant argues that it is
impossible to explain an innocent reason for the use of these domain names.
Respondent's
Additional Response to Contention No. 1
Respondent contends that Complainant
offered no evidence that Respondent who was living in Italy had constructive
notice of the Complainant's
mark.
Complainant's Second Additional
Submission in Reply to Respondent's Additional Response as to Contention No. 1
Complainant contends that previous panels
have found that Respondent had constructive notice of a mark in spite of his
Italian residency.
As to Respondent's contention that the
use of his domain name has no relationship with Complainant's business,
Complainant states
that Respondent's webpages show clear commercial use of his
domain name including search results that feature links to services that
compete with Complainant's services.
Contention
No. 2
As to rights and legitimate interests
contentions, Complainant states:
Complainant contends that Respondent has
no legitimate interests in the domain name in issue. Before notification of the dispute with Complainant, Respondent
had not used nor made any demonstrable preparation to use <lowermybill.com>
to offer goods or in a legitimate, non-commercial, fair use manner.
Complainant contends that Respondent is a
known cybersquatter who registers domain names that are confusingly
similar to third-party trademarks in order to intercept unwitting Internet
users
for Respondent's own commercial benefit.
Complainant advises that when an Internet
user mistakenly omits "s" when attempting to access
<lowermybills.com>,
he gets a cost-per-click search engine at
<searchport.com>. This site
contains search results for various categories including links to businesses
who offer services that compete with Complainant's
services.
Respondent's Response
to Contention No. 2
Respondent contends that he is making a
legitimate use of the domain name. He
states that his website contains a commentary upon the actual position of the
debate regarding the opportunity to reduce poor nations'
financial problems,
with regard to the policy that G8 nations intend to follow.
Respondent contends that he is not using
the domain name for commercial gain, that in fact the forum and the e-mail
furnished are
free and that there is no chance for confusion. He states that this use is not a pretext.
Complainant's Reply or Additional
Submission to Respondent's Response to Contention No. 2
Complainant contends that the current use
is a pretext. It states that the
subject domain name was registered on April 17, 2002 and was not used in the
current manner before February 3,
2003.
Complainant again states that this
confusingly similar domain name is a common practice among cybersquatters
who profit from this use.
In addition, Complainant points out that
at <domainstate.com>, one of the many resellers of domain names where
Respondent has
some notoriety, Respondent attempts to sell a number of domain
names for $800,000.00. One of the listed
domain names for sale is <lowermybill.com>. This offer to sell was in December 2002,
less than a month before Respondent received Complainant's demand letter. Complainant says that this, of course,
refutes Respondent's assertion that his domain name was registered for a
legitimate reason.
Respondent's Additional Response to
Contention No. 2
Respondent states that the statement of
use by the Trademark Office on February 28, 2001 does not show constructive
notice of the
mark, which is a descriptive one and does not constitute evidence
that the trademark was visible to anyone who is a resident of another
country.
Respondent insists that the website is
not infringing on Complainant's rights and Respondent was unaware of the
existence of Complainant's
business.
Complainant's Second Additional Submission
in Reply to Respondent’s Additional Response as to Contention No. 2
Complainant states that previous UPRP
decisions have found that Respondent had constructive notice of marks in spite
of his Italian
residency.
Contention
No. 3
As to registration and use being in bad
faith contention, Complainant states:
Respondent has registered the confusingly
similar domain name <lowermybill.com> in bad faith because his
sole purpose was to divert traffic from Complainant's website for Respondent's
own commercial use.
Complainant contends that up until
February 5, 2003, Respondent used the disputed domain name to direct Web
traffic to a cost-per-click
search engine known as SearchPort operated by a
company known as NetVisibility, Inc.
This company pays domain name owners for traffic they generate and
shares with them advertising revenues derived from such traffic.
Further, Complainant contends that
Respondent's rampant pattern of typosquatting is additional evidence of
bad faith.
Complainant argues that Respondent is
trading on the goodwill and value established by Complainant in its mark and is deriving an economic
benefit from this practice.
Respondent's Response to Contention No. 3
Respondent contends that Respondent's
pattern of conduct could be considered bad faith only if Respondent had, at the
time of the
registration, constructive notice of the existence of Complainant'
trademark.
Respondent advises that Respondent's bad
faith cannot be demonstrated by those other cases alone.
In addition, Complainant has not provided
any evidence that the trademark is known in Italy so the use of the domain name
is actually
non-commercial.
Respondent claims that he did not
register the domain name to sell it and in fact he refused an offer of
$5,000.00.
Complainant's Additional Submission or
Reply to Respondent's Response
Complainant contends that in addition to
Respondent's rampant pattern of bad faith, it has presented proof of notoriety
of the Complainant's
mark through website statistics and the wide media
coverage of the services under the mark.
Finally, Complainant states that
Respondent cannot ignore a trademark because it is not registered in
Italy. In the registration agreement
signed by Respondent it provides that it is the responsibility of registrants
to not register domain
names that may infringe on the rights of others.
Respondent's
Additional Response to Contention No. 3
Respondent insists that his use of the
domain name is not related to Complainant's claimed mark and that precludes the
binding of
bad faith.
FINDINGS
IDENTICAL OR CONFUSINGLY SIMILAR:
Policy
¶ 4(a)(i)
The
Panel finds the issues in favor of Complainant.
Complainant has provided evidence to
establish that it has rights in the LOWERMYBILLS.COM mark through registration
of the mark with
the United States Patent and Trademark Office (Reg. No.
2,519,342, registered on December 18, 2001), the Canadian Intellectual Property
Office (Reg. No. 1,067,641, registered on June 6, 2003), the UK Patent Office
(Reg. No. 2,239,322, registered on October 26, 2001)
and IP Australia (Reg. No.
842,593, registered on July 14, 2000).
Complainant’s registration of the LOWERMYBILLS.COM mark establishes
Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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 Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent
operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction).
Complainant
asserts that the <lowermybill.com>
domain name is confusingly similar to its LOWERMYBILLS.COM mark. Respondent merely omits the letter “s” in
the domain name at issue. Omitting a
letter reflects a very common typographical error. Furthermore, omitting the letter “s” does not change the overall
impression created by the <lowermybill.com>
domain name. The Panel concludes that
the disputed domain name is confusingly similar to Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency
to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Victoria's Secret v. Internet
Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000)
(finding the domain name <victoriasecret.com> to be confusingly similar
to Complainant’s
trademark, VICTORIA’S SECRET).
RIGHTS AND LEGITIMATE INTERESTS:
Policy
¶ 4(a)(ii)
The
Panel finds the issues on this element in favor of Complainant
Complainant argues that Respondent is not
commonly known, either as an individual, business or organization, by the
LOWERMYBILLS.COM
mark or the <lowermybill.com>
domain name. Complainant further states
that nowhere in the WHOIS contact information for the disputed domain name is
there any reference to either
the LOWERMYBILLS.COM mark or the <lowermybill.com> domain
name. In addition, Complainant asserts
that there is no affiliation, association or business relationship of any kind
between Respondent
and Complainant and Complainant has not licensed or
authorized Respondent to use the LOWERMYBILLS.COM mark in any manner. The Panel finds that Respondent is not
commonly known by the LOWERMYBILLS.COM mark or the <lowermybill.com> domain name. See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interests where Respondent was not commonly known by
the mark
and never applied for a license or permission from Complainant to use
the trademarked name); see also Tercent Inc.
v. 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).
Complainant contends that before
notification of this dispute, Respondent had neither used nor made any
demonstrable preparations
to use the <lowermybill.com> domain name in connection with a bona
fide offering of goods or services or in a legitimate noncommercial fair
use. It was not until several weeks
after receipt of Complainant’s demand letter and notification of the dispute
that Respondent developed
an alleged “Third World Debt” website at the disputed
domain name. The Panel concludes that
Respondent does not have any rights or legitimate interests under Policy ¶
4(a)(ii). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent
made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice
of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name);
see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection
with any type of bona fide offering of goods and services).
Complainant asserts that since
notification of this dispute, Respondent has been using the <lowermybill.com> domain name to
redirect Internet users who mistakenly omit the letter “s” when attempting to
access Complainant’s website to a pay-per-click
search engine at the
<searchport.com> domain name. The
webpage at the <searchport.com> domain name displays links for various
types of services including links to businesses that
offer services that
compete with Complainant’s services.
The Panel finds that Respondent is not using the domain name at issue in
connection with any bona fide offering of goods or services
pursuant to Policy
¶ 4(c)(i) or for any legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Pioneer Hi-Bred Int’l
Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that
Respondent did not have rights or legitimate interests in a domain name that
used Complainant’s mark and redirected Internet users to a website that pays
domain name registrants for referring those users to
its search engine); see
also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5,
2003) (holding that Respondent’s use of the disputed domain name, a simple
misspelling of Complainant’s
mark, to divert Internet users to a website that
featured an Internet directory, was neither a bona fide offering of goods or
services
nor a legitimate noncommercial or fair use of the domain name).
REGISTATION AND USE IN BAD FAITH:
Policy
¶ 4(a)(iii)
The
Panel finds the issues on this element in favor of Complainant.
Complainant argues that Respondent is
using the <lowermybill.com> domain
name to attract, for commercial gain, Internet users by creating a likelihood
of confusion with Complainant’s mark as to the
source, sponsorship,
affiliation, or endorsement of its website.
Respondent registered the misspelled version of Complainant’s
LOWERMYBILLS.COM mark to earn referral fees or commissions by redirecting
Internet users to a pay-per-click search engine. The Panel concludes that Respondent registered and is using the
domain name at issue in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that
“[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become
confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered
and used in bad faith pursuant to Policy
¶ 4(b)(iv)); see also CMG
Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001)
(finding that Respondent’s use of the VINCE LOMBARDI mark to divert Internet
users to its
commercial website constituted bad faith use and registration of
the disputed domain name).
The Panel finds that Respondent
registered and used the <lowermybill.com>
domain name in bad faith because Respondent used a typosquatted version of
Complainant’s mark to attract Internet users who omitted
the letter “s” to its
pay-per-click website. 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).
DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires
that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
The Panel finds that Respondent's <lowermybill.com>
domain name is confusingly similar to the LOWERMYBILLS.COM mark.
The Panel finds that Respondent has no
rights or legitimate interest in the disputed domain name.
The Panel finds that Respondent
registered and used the domain name in bad faith.
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 <lowermybill.com>
domain name be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated:
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/946.html