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Generic Top Level Domain Name (gTLD) Decisions |
LowerMyBills, Inc. v. Lox Investments c/o
Web Master
Claim Number: FA0409000323756
PARTIES
Complainant
is LowerMyBills, Inc. (“Complainant”),
represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is Lox Investments c/o Web Master (“Respondent”),
1423 S. 17th Street, Terre Haute, IN 47802.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lowermybills.net>,
registered with Enom, Inc.
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.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 3, 2004; the Forum received
a hard copy of the
Complaint on September 7, 2004.
On
September 3, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <lowermybills.net> is
registered with Enom, Inc. and that the Respondent is the current registrant of
the name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
September 10, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 30, 2004 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@lowermybills.net by
e-mail.
A
timely Response was received and determined to be complete on September 30,
2004.
Complainant’s
Additional Submission was timely, being received on October 5, 2004. Respondent’s Additional Submission was
timely, being received on October 7, 2004.
On October 8, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant, LowerMyBills, Inc. is
the owner of the trademark LOWERMYBILLS.COM.
Complainant’s LOWERMYBILLS.COM mark and trade name are used in
connection with its services of providing comparison shopping and
consumer-related
information through its website and has been used in
connection with Complainant’s Internet-based consumer information services
since
as early as February 7, 2000.
Complainant registered the LOWERMYBILLS.COM mark with the United States
Patent and Trademark Office (Reg. No. 2,519,342 issued December
18, 2001) and
in numerous other countries including Canada (Reg. No. 1067641), the United
Kingdom (Trademark No. 2239322 issued July
14, 2000), and Australia (Reg. No.
842593).
2. Matt Coffin, the founder of
Complainant, had registered the disputed domain name <lowermybills.net>,
but as a result of an administrative error, the registration was mistakenly
allowed to expire in 2003.
3. The disputed domain name was then
registered on June 2, 2003, by OgreDomains a.k.a. EZShopn.com Inc. Both OgreDomains and EZShopn.com Inc. are
entities operated by Joe Soldonia.
After registering the disputed domain name, Mr. Soldonia began using the
<lowermybills.net> domain name in connection with
ThaDollarStretcher.com, a website that is affiliated with him that offers
services virtually identical
to Complainant’s services, including comparing
long distance phone services, credit card rates, and Internet access rates. Additionally, ThaDollarStretcher.com appears
to have an affiliate relationship with Cognigen Networks, Inc., another entity
that is
a direct competitor with Complainant.
4. Complainant is an independent online
service that provides consumers with a free one-stop solution for comparing
rates and plans for
all their monthly bills.
Complainant’s services include assisting consumers by comparing
different providers in several categories, including long distance
and wireless
phone services, bank loans, Internet access service, credit cards, and
insurance. The side-by-side comparisons
include benefits and prices offered by providers in reoccurring monthly bill
categories. Complainant also assists
consumers in signing up for a particular provider, as well as offering consumer
tips, financial calculators,
and incremental bill saving suggestions. The LOWERMYBILLS.COM trademark has been used
in connection with these services continuously since as early as February 2000.
5. Complainant has invested
substantially in advertising and promoting its services offered under the
LOWERMYBILLS.COM mark. Since it started
doing business, Complainant has spent over $25 million on print and Internet
advertising and currently invests $1
million dollars per month. Complainant’s website at the
<lowermybills.com> domain name is also one of the most active sites on
the Internet. According to statistics
obtained by the Complainant through third-party software, the
<lowermybills.com> website has received
over 75 million unique visitors
to date and 4 to 5 million unique visitors each month. Complainant’s services have also been
featured in many major media outlets, including in The Wall Street Journal, the New
York Times and Newsweek Business Week,
USA Today and CBS MarketWatch.
6. The disputed domain name, <lowermybills.net>,
is nearly identical and confusingly similar to Complainant’s LOWERMYBILLS.COM
trademark in that it differs only in the top level
designation “.net,” as
opposed to Complainant’s mark “.com.”
7. Respondent registered and is using
the <lowermybills.net> domain name to take advantage of
Complainant’s reputation and goodwill in LOWERMYBILLS.COM. The subject domain name is likely to confuse
Complainant’s customers and potential customers into believing that there is
some affiliation,
connection, sponsorship, approval or association between the
Respondent and Complainant when in fact none exists.
8. Respondent has no legitimate
interest or rights in the disputed domain name. Respondent is not commonly known, either as and individual,
business or organization, by the name LOWERMYBILLS or the <lowermybills.net>
domain name.
9. 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.
10. Respondent is not making a
non-commercial or fair use of the disputed domain name. The websites that have been associated with the <lowermybills.net> domain
name have all been commercial in nature and the subject domain name is
being operated for the financial benefit of the Respondent.
11. Respondent registered and is using
the confusingly similar disputed domain name <lowermybills.net> in bad faith under Sections 4(b)(i),
(iii) and (iv) of the UDRP.
12. Respondent registered the <lowermybills.net>
domain name on June 2, 2003, long after Complainant had adopted the
LOWERMYBILLS.COM trademark.
Furthermore, Respondent had actual or constructive knowledge of
Complainant’s rights in the LOWERMYBILLS.COM trademark due to its
registration
with the USPTO.
13. Respondent is a competitor of
Complainant by offering services virtually identical to Complainant and in the
same market. Such unauthorized offering
of services is evidence that Respondent registered and used the disputed domain
name in bad faith under
Policy Paragraph 4(b)(iii) by registering the name
primarily to disrupt Complainant’s business.
14. By selecting and using a domain name
that is confusingly similar to Complainant’s well-known trademark to direct
users to websites
that offer competing services, Respondent has acted in bad
faith within the meaning of Policy Paragraph 4(b)(iv).
B.
Respondent
1. The disputed domain name, <lowermybills.net>,
is not confusingly similar to Complainant’s LOWERMYBILLS.COM mark because the
“.net” and “.com” gTLDs are viewed very differently
by Internet users. Respondent contends that “.com” is most
often associated with the name of a business and not “.net,” so it is not
likely that Complainant’s
clients would become confused.
2. The disputed domain name, <lowermybills.net>,
was registered to compliment Respondent’s financial and telecommunications
websites, including its website at the <great-deals.ws>
domain name,
which is a special offers and coupons website.
Accordingly, Respondent has rights to and a legitimate interest in the
disputed domain name by using its name in connection with a
bona fide offering
of goods or services pursuant to Policy Paragraph 4(c)(i).
3. There is no evidence of bad faith
registration and use.
4. The <lowermybills.net>
domain name was registered to compliment Respondent’s special offers and
coupons website, and Respondent had no knowledge of
any potential trademark
infringement issues.
C.
Additional Submissions
Complainant’s
Additional Submission
1. Despite Respondent’s claims
otherwise, the <lowermybills.net>
domain name was, in fact, immediately used by Respondent in connection
with services offered on his ThaDollarStretcher.com
site, services that were identical to those offered by Complainant. These services include comparison shopping
and consumer-related information in categories such as long distance and
wireless phone
services, bank loans, Internet access service, credit cards and
insurance. Given the commercial nature
of the websites connected to the <lowermybills.net>
domain name before the July 12, 2003, date and up to the present time,
Respondent cannot now claim to have registered and used the
domain name in
connection with a legitimate or fair purpose.
2. Respondent attempts to distinguish
the services offered at his <great-deals.ws>
domain name, which links to a website that Respondent operates and one
that includes links to services that compete with Complainant’s services. These services include ThaDollarStretcher.com and BillDoctor.com, both of which are
operated by Respondent. Clearly,
Respondent is using the disputed domain name to benefit from Complainant’s
goodwill in its well-known LOWERMYBILLS.COM trademark. Respondent’s well-documented activities in
connection with the <lowermybills.com>
domain name, which is confusingly similar to and wholly incorporates
Complainant’s LOWERMYBILLS.COM trademark, justify a finding
of bad faith in
registration and use of the subject domain name pursuant to the UDRP.
Respondent’s
Additional Submission
1. There are many confusingly similar
domains available to be registered.
2. If Complainant was concerned about
this subject, it would have protected its mark by registering all similar
sounding and spelled
names.
3. Complainant is attempting to use
ICCAN as a club to squash any attempt to use any variant of LOWERMYBILLS after
the fact, rather than
being proactive in eliminating the ability of anyone to
register any name to which Complainant would take offense.
4. The <great-deals.ws> domain name does have two or three links
that are in direct competition with LOWERMYBILLS, but there are also an
additional 90 to 100 other links
that have nothing to do with the telecom or
financial services industry.
FINDINGS AND DETERMINATIONS
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.
As will
be seen, this matter factually and legally calls for summary disposition in
favor of the Complainant because the three elements
required by Policy
Paragraph 4(a) have been established.
Respondent’s
major defenses as to the use of “.net” vis-à-vis
“.com” in Complainant’s mark, and as to Complainant’s failure itself to police
and register other similar domain names, are without
merit.
There can be no doubt that the disputed
domain name and Complainant’s trademark are identical, except for the use of
“.net” in the
former and “.com” in the latter.
In McCarthy, Trademarks and Unfair Competition (Update 12/2001) page 25-232, in
citing Brookfield Communications, Inc. v.
West Coast Entertainment Corp.,
[1999] USCA9 225; 174 F.3d 1036, 1055 (9th Cir. 1999), it is said:
The Ninth Circuit has held that when
comparing a trademark with an accused domain name, the presence in the domain
name of the ‘.com’
top-level domain indicator is of little importance in
distinguishing the marks because it is so common and generic. Thus, the court found that the domain name
‘moviebuff.com’ infringed plaintiff’s trademark ‘MovieBuff.’ The court also noted that if the owners of
both marks utilize the Internet as a marketing and advertising tool, this
heightens the
likelihood of confusion.
(Footnote omitted.)
See also Rollerblade, Inc. v.
McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar; see also Elder Mfg. Co., Inc. v. Recker, FA 98414
(Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute
that Respondent’s domain names are virtually
identical, and thus confusingly
similar to Elder’s trademarks. Any
superficial differences between the domain names and the Elder trademarks are de minimis and of no legal
consequence.”).
Moreover, as to any claim that
Complainant’s mark is composed of generic terms, Professor McCarthy tells us
(McCarthy, supra, page 12-29):
If the
plaintiff has a federal registration, it constitutes a strong presumption that
the term is not generic and defendant bears
the burden of overcoming the
presumption. (Footnote omitted.)
Respondent’s argument that he is being
singled out because there are many similar domain names that are available is
without merit. It is not relevant. See MGM-Pathe Communications v. Pink Panther Patrol (S.D.N.Y. 1991) 774
F.Supp. 869, 873 (“. . . the Patrol contends that another registered trademark
for the words ‘pink panther’ exists, and at least 15 other establishments,
including a bar and a liquor store, use the Pink Panther name. These arguments are unavailing. . . . The
fact that there are other establishments that use the name Pink Panther does
not contradict
the harm suffered by MGM from the Patrol’s use of the mark.”).
Complainant has established the Policy
Paragraph 4(a)(i) element.
It is evident, and, indeed, admitted,
that the disputed <lowermybills.net> domain name registered by
Respondent redirects Internet users interested in Complainant’s services to a
website that features
products and services identical to those offered by
Complainant under the LOWERMYBILLS.COM mark.
It is determined, accordingly, that Respondent’s use of a domain name
confusingly similar to Complainant’s mark to divert Internet
users to
Respondent’s competing website does not constitute a bona fide offering of goods
or services pursuant to Policy Paragraph
4(c)(i) or a legitimate non-commercial
or fair use pursuant to Policy Paragraph 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding
that Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Clear
Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum
Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no
rights or legitimate interests
in a domain name that utilized Complainant’s
mark for its competing website); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10,
2003) (finding that Respondent had no rights or legitimate interests in the
disputed domain
name where it used Complainant’s mark, without authorization,
to attract Internet users to its business, which competed with Complainant).
Thus, the element required by Policy
Paragraph 4(a)(ii) has been established.
It is found and determined that
Respondent intentionally registered and used the disputed <lowermybills.net>
domain name for Respondent’s commercial gain.
The disputed domain name diverts Internet users who seek Complainant’s
business to Respondent’s commercial website through the use
of a domain name
that is confusingly similar to Complainant’s mark. Furthermore, the disputed domain name resolves to a website that
offers products and services that compete with Complainant. Respondent’s practice of diversion,
accordingly, motivated by commercial gain, constitutes bad faith registration
and use pursuant
to Policy Paragraph 4(b)(iv).
See Indentigene, Inc. v.
Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
Respondent’s use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that Complainant is the source of or
is sponsoring the services
offered at the site); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where Respondent attracted users to a website sponsored by Respondent and
created
confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of the website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial
gain by creating a likelihood of confusion with
Complainant’s mark and offering the same chat services via his website as
Complainant).
Thus, Complainant has established the
element required by Policy Paragraph 4(a)(iii).
If there were any doubt, and there is
none, there is a legal presumption of bad faith when Respondent was aware, as
here, or should
have been aware of Complainant’s trademark.
In Interstellar
Starship Services, Ltd. v. Epix, Inc., [1999] USCA9 357; 184 F.3d 1107, 1111 (9th Cir. 1999),
it was said:
However, ISS became aware of the ‘EPIX’
trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its
trademark status permits a presumption of intent to deceive. See Brookfield,
174 F.3d at 1059 (citing Official Airline
Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong
evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: October 22, 2004
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