DECISION

InfoSpace, Inc. v. Modern Limited-Cayman Web Development

Claim Number:  FA0312000215371

PARTIES

Complainant is InfoSpace, Inc., Bellevue, WA (“Complainant”) represented by Pallavi M. Wahi, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104.  Respondent is Modern Limited-Cayman Web Development, P.O. Box 908, George Town, Grand Cayman, Cayman Islands, British West Indies (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dogpile.org>, registered with Enom.

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.

Tyrus R. Atkinson, Jr.,as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 2, 2003; the Forum received a hard copy of the Complaint on December 5, 2003.

On December 8, 2003, Enom confirmed to the Forum that the domain name <dogpile.org> is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@dogpile.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 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <dogpile.org> domain name is identical to Complainant’s DOGPILE mark.

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

3. Respondent registered and used the <dogpile.org> domain name in bad faith.

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

FINDINGS

Complainant registered DOGPILE as a trademark and service mark with the United States Patent and Trademark Office (“USPTO”) on June 5, 2001 (Reg. No. 2456655) and November 7, 2000 (Reg. No. 2401276).  Complainant is a worldwide provider of wireless and Internet software, as well as application services.  Among other things, Complainant provides directory services offering access to information about various subjects via the Internet.

Complainant, through its wholly owned subsidiary, Go2Net, Inc., has been using the DOGPILE trademark since November 11, 1996.

Complainant also owns the registrations for <dogpile.com> and <dogpile.net>, both registered on August 20, 2002.

Respondent registered the disputed domain name, <dogpile.org>, on November 6, 2000, and is passively holding the name.

Respondent has previously been ordered to transfer a number of its registered domain names by ICANN Panels.  E.g. Sportsman’s Guide, Inc. v. Modern Limited-Cayman Islands, D2003-0305 (WIPO June 18, 2003); Albertson’s Inc., v. Modern Limited-Cayman Web Dev., FA 178222 (Nat. Arb. Forum Apr. 21, 2003); Barrett Enters. Group v. Modern Limited-Cayman Web Dev., FA 162191 (Nat. Arb. Forum July 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The disputed domain name incorporates Complainant’s mark in its entirety.  Top-level domain names are irrelevant for purposes of determining whether a domain name is identical or confusingly similar to a mark pursuant to Policy ¶ 4(a)(i).  See 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, Policy ¶ 4(a)(i) is established.

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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).

There is also no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

The disputed domain name is not being used.  Since Respondent has proffered no evidence to suggest it is preparing to use the name, the Panel finds that Respondent is engaged in passive holding and lacks rights to and legitimate interests in the name pursuant to Policy ¶¶ 4(c)(i) & (iii).  See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also 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 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).

Therefore, Policy ¶ 4(a)(ii) is established.

Registration and Use in Bad Faith

Respondent’s history of registering domain names that infringe others’ marks is relevant for determining whether Respondent registered <dogpile.org> for the purpose of preventing Complainant from reflecting its DOGPILE  mark in a corresponding domain name pursuant to Policy ¶ 4(b)(ii).  Accordingly, the Panel finds that Respondent registered the name for this precise purpose.  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known businesses).

In conjunction with the above-mentioned, Respondent’s subsequent non-use of the domain name also supports the notion that at the time of registration, Respondent had no intent to use the domain name for any specific purpose.  Past Panels have held that this inference is appropriate; thus, Respondent’s passive holding also evidences bad faith registration and use.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used 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 <dogpile.org> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 19, 2004

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