DECISION

InfoSpace, Inc. v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0406000282775

PARTIES

Complainant is InfoSpace, Inc. (“Complainant”), represented by Gerard A. Taylor, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg, #518, Curacao, AN.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com>, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 3, 2004; the Forum received a hard copy of the Complaint on June 7, 2004.

On June 8, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. 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 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 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@gdogpile.com,postmaster@dogpilegames.comand postmaster@httpdogpile.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 July 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,  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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names are confusingly similar to Complainant’s DOGPILE mark.

2. Respondent does not have any rights or legitimate interests in the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names.

3. Respondent registered and used the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names in bad faith.

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

FINDINGS

Complainant, InfoSpace, Inc., is a global provider of wireless and Internet software and application services to the leading wireless and broadband providers, websites and merchant resellers around the world. 

Complainant, through its wholly owned subsidiary, Go2Net, Inc., holds numerous registrations for the DOGPILE mark with the United States Patent and Trademark Office (Reg. No. 2,456,655 issued June 5, 2001 and Reg. No. 2,401,276 issued November 7, 2000).

Complainant began using the DOGPILE mark in November 1996 in connection with computer programs and telecommunications programs, including Internet search services, in the United States and worldwide.  Complainant, for fiscal year end 2003, generated $9.9 million in net income on revenues of $46.9 million.

Complainant operates its main websites at the <dogpile.com> and <dogpile.net> domain names.

Respondent registered the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names between November 18, 2003 and May 10, 2004.   Respondent is using the domain names in connection with competing web searching or indexing services.

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 that it has rights in the DOGPILE mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce since November 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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); 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.).

The <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names are confusingly similar to Complainant’s DOGPILE mark because the domain names incorporate the Complainant’s mark in its entirety and simply add the letter, “g,” the generic or descriptive term, “games,” or the prefix, “http.”  The mere additions of a letter “g,” a generic or descriptive term that describes a segment of Complainant’s business, or a “http” prefix, do not negate the confusing similarity of Respondent’s domain names 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 Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant); see 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names, which contain in their entirety Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Moreover, where Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Respondent is using the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names in connection with competing web searching or indexing services.  Respondent’s use of domain names that are confusingly similar to Complainant’s DOGPILE mark to divert Internet users to a competing search engine website that is unrelated to Complainant’s mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[U]se of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use."); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services).

Nothing in the record, including the WHOIS domain name registration information, for the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names suggest that Respondent is commonly known by the domain names or by Complainant’s DOGPILE mark pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names to provide web searching or indexing services.  Complainant’s business also provides search and directory services.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark to offer goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Additionally, Respondent’s disputed domain names cause Internet users to mistakenly believe that the domain names are affiliated with Complainant.  Thus, the Panel determines that the initial user confusion that the domain names cause is evidence that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Further, Complainant asserted that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent is using the <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names intentionally to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its websites.  Due to the lack of a Response, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel finds that 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 <gdogpile.com>, <dogpilegames.com> and <httpdogpile.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  July 23, 2004

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