DECISION

InfoSpace, Inc. v. Sunwave Communications c/o Donna McCole

Claim Number: FA0309000198015

PARTIES

Complainant is InfoSpace, Inc. (“Complainant”) represented by Shannon M. Jost, 800 Fifth Ave., Suite 4000, Seattle, WA, 98104. Respondent is Sunwave Communications c/o Donna McCole, (“Respondent”) represented by Donna McCole, 895 “B” Street #509, Hayward, CA, 94541.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <authorizenetsucks.com>, registered with Onlinenic, 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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 24, 2003; the Forum received a hard copy of the Complaint on September 26, 2003.

On September 25, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <authorizenetsucks.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 October 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 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@authorizenetsucks.com by e-mail.

An untimely Response was received on October 24, 2003, one day after the deadline for submitting the Response had elapsed. Thus, the Response is not in compliance with UDRP Rule #5(a).  Nonetheless, the Panelist has reviewed and considered the Response.

On October 29, 2003, Complainant submitted a timely additional submission in compliance with Supplemental Rule 7.

On October 30, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P. Jay Hines as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant identifies itself as 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.  Complainant provides directory services offering access to information about various subjects via the Internet, provides search engines for obtaining data on the Internet, and provides for brokerage of electronic commerce transactions conducted via the Internet. 

Complainant adopted and has used the mark AUTHORIZE.NET since at least as early as November 1996 and owns a claimed family of U.S. trademark and service mark registrations in connection with computer software for use in the processing and management of credit card and electronic check transactions conducted via a global computer network, as follows:  Supplemental Register Registration No. 2,422,317 for the mark AUTHORIZE.NET in Classes 9 and 36; Principal Register Registration No. 2,749,994 for the mark AUTHORIZE.NET in Class 36; Principal Register Registration No. 2,441,859 for the mark AUTHORIZE.NET WHERE THE WORLD DOES BUSINESS ON THE WEB & DESIGN in Classes 9 and 36; Principal Register Registration No. 2,746,969 for the mark AIRPAY BY AUTHORIZE.NET in Classes 9 and 36; and Principal Register Registration No. 2,685,523 for the mark POCKETAUTHORIZE.NET in Classes 9 and 36.  Complainant also offers its computer software and global financial services via its Internet websites at <authorize.net> and <authorizenet.com>.  Complainant claims that the AUTHORIZE.NET mark is well known due to its extensive use, advertising and promotional efforts involving several million dollars. 

Complainant alleges that the domain name <authorizenetsucks.com> is confusingly similar to Complainant’s AUTHORIZE.NET mark despite the addition of the pejorative term “sucks.”  Complainant alleges that the domain name incorporates its full mark, which is the dominating presence in the domain name.  Thus, it is inherently likely to lead some people to believe that Complainant is associated with it.  Further, not all Internet users are English speaking or familiar with the use of “sucks” to indicate a complaint site.  Complainant alleges that the growing weight of decisions have found confusing similarity under similar circumstances, noting that some companies may themselves establish a complaint or comment site to obtain feedback on their products.  Relying on Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001), Complainant alleges that “the right to express one’s view is not the same as the right to use another’s name to identify oneself as the source of those views…”

At the time of submitting the Complaint, Respondent’s website did not function as a complaint site.  Rather, it was a password-accessed site serving no purpose other than to disrupt the business of Complainant by diverting traffic from Complainant’s website.  With respect to rights or legitimate interests, Complainant alleges that Respondent has no relationship with Complainant and it is not authorized to use the AUTHORIZE.NET mark or any variations thereof.  Respondent has never been known by or operated business under the names “AUTHORIZE.NET” or “AUTHORIZENETSUCKS” and has no trademark or service mark rights in the terms.  Complainant asserts that Respondent’s intent is to tarnish Complainant’s mark and not to make a legitimate, non-commercial or fair use of the domain name.  Respondent registered the domain name on July 22, 2003.  Complainant sent a cease and desist letter on August 26, 2003.  Respondent’s failure to reply to the letters suggests a lack of rights or legitimate interests.

With respect to bad faith, Complainant alleges that Respondent clearly had knowledge of Complainant and its well-known mark and registered the subject domain name in an effort to tarnish Complainant’s mark.  Complainant relies on Vivendi, supra and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 14, 2000) to  support a finding of bad faith under Policy paragraph 4(b)(iii).

B. Respondent

Respondent Donna McCole claims that the subject domain name is her personal property, not that of Sunwave Communications.  Respondent claims that the domain name was not registered for commercial gain, but to provide consumers with information to help them better evaluate the AUTHORIZE.NET service.  Respondent alleges that it has not prevented Complainant from using its mark as a domain name, that Respondent is not a competitor of Complainant and that it has not offered to sell the domain name to anyone.

Respondent disagrees that the domain name is confusingly similar to Complainant’s mark as its meaning is substantially different from the simple designation AUTHORIZE.NET.  Respondent disagrees that non-English speaking individuals may be confused as “sucks” is a dictionary term.

Respondent claims that initially its website was not a password protected site but merely a default skeleton page put up for newly created websites.  Respondent attaches a copy of the current website’s content, which includes two Complainant stories posted by Respondent on October 22 and October 23, 2003.  Respondent claims that the site is clearly a forum to express her personal opinions about Complainant’s service.  The posted stories refer to a friend that had difficulties as an AUTHORIZE.NET customer, particularly with respect to transaction processing and the security of the system.

C. Additional Submissions

Complainant alleges that Respondent’s response is not entitled to consideration as it was untimely submitted.  Complainant asserts that Respondent’s posting of content to the website at the eleventh hour should be disregarded as an obvious attempt to evade a finding of bad faith.  Complainant relies on Vivendi, supra and Koninkglijke Philips Elecs. N.V. v. In Seo Kim, 2001-1195 (WIPO Nov. 12, 2001).  Complainant also sites additional cases for the proposition that bad faith has been found based on Respondent’s actual knowledge of Complainant and its mark at the time the subject domain was registered and further that Respondent’s rights to post criticism does not extend to use of Complainant’s registered mark in its entirety in a domain name.  

FINDINGS AND 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 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;

(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 mark AUTHORIZE.NET.  The registered domain name merely adds the word “sucks” to Complainant’s mark.  Although there is somewhat of a split among the UDRP decisions addressing complaint sites of this nature, the majority of cases have found that the addition of the word “sucks” does not defeat a finding of confusing similarity.  The Panel agrees with the analysis set forth in Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) and the recent case of Wachovia Corp. v. Flanders, D2003-0596 (WIPO Sept. 19, 2003) that each case must be assessed on its own merits. 

In this case, the Panel concludes that there is potential for confusion or mistake on the part of the Internet user. Complainant’s mark is sufficiently well-known that someone searching on the Internet, whether from the United States or abroad, may assume an association with Complainant.  Respondent’s domain name is sufficiently similar to Complainant’s marks so that search engine results likely will confusingly list Respondent’s domain name when one searches for Complainant’s mark.  Thus, the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s marks.

Rights or Legitimate Interests

Respondent did not operate the website at <authorizenetsucks.com> to any extent until after Complainant’s cease and desist letter of August 26, 2003, and the subject UDRP complaint.  It is difficult for the Panel to give much weight to the meager content created and posted while the UDRP proceeding was pending.  Such efforts, as found in Koninkglijke Philips, supra and Vivendi, supra, permit an inference that they are contrived to prevent Complainant from succeeding, not to make a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii).  Before notice of the dispute and up until the recent postings, Respondent, by its own admission, states that the website was merely a placeholder for the domain.  As such, the only inference is one of an intent to tarnish.  Accordingly, the Panel finds that Complainant prevails on the issue of no rights or legitimate interests. 

Registration and Use in Bad Faith

It is obvious that Respondent was aware of Complainant’s mark at the time it registered the domain name.  It appears that Respondent registered the domain name, encompassing a known mark, primarily for the purpose of tarnishing the mark at issue. Cubela’s, Inc., supra.   Thus, the Panel finds that the domain name has been registered and 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 <authorizenetsucks.com> domain name be TRANSFERRED from Respondent to Complainant.

P. Jay Hines, Panelist
Dated: November 10, 2003

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