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Generic Top Level Domain Name (gTLD) Decisions |
InfoSpace, Inc. v. Nikkoconsulting c/o
Ryan Schultz
Claim
Number: FA0406000286952
Complainant is InfoSpace, Inc. (“Complainant”),
represented by Pallavi Mehta Wahi, of Stokes Lawrence, P.S.,
800 Fifth Ave., Suite 4000, Seattle, WA 98104.
Respondent is Nikkoconsulting c/o Ryan Schultz (“Respondent”), 5631 Webster St., Downers Grove, IL
60516.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dogpile.biz>, registered with Enom,
Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 15, 2004; the Forum
received a hard copy of the
Complaint on June 18, 2004.
On
June 16, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name
<dogpile.biz> is registered with Enom, Inc. and that 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
June 21, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 12, 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@dogpile.biz 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 19, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Honorable
Paul A. Dorf (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dogpile.biz>
domain name is identical to Complainant’s DOGPILE mark.
2. Respondent does not have any rights or
legitimate interests in the <dogpile.biz> domain name.
3. Respondent registered and used the <dogpile.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Infospace, Inc., is a well-known global provider of wireless and Internet
software and application services to leading
wireless and broadband providers,
websites, and consumers. Complainant also offers search and directory services
about various subjects
via the Internet. Moreover, Complainant offers
meta-search services including a meta-search engine found at its websites at
the <dogpile.com>
and <dogpile.net> domain names.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the DOGPILE mark (Reg. No. 2,456,655,
issued June 5, 2001 and Reg. No. 2,401,276, issued
November 7, 2000). Complainant, through its wholly owned subsidiary Go2Net,
Inc., has
been using the DOGPILE mark since at least as early as November, 1996
in connection with search services and meta-search services
on the Internet
world-wide.
Complainant
offered to purchase the domain name from Respondent. Respondent rejected
Complainant’s good faith offer stating that “[d]ue
to traffic throughout and
name recognition the domain name dogpile.biz is worth more then $200.”
Respondent
registered the <dogpile.biz> domain name on March 30, 2004 and is
using the domain name solely as a means to advertise Respondent’s willingness
to sell the domain
name registration.
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.
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 for the last seven years. 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <dogpile.biz> domain name for the primary purpose of
selling the domain name registration to Complainant. Furthermore, when
Complainant offered
to purchase the domain name from Respondent, Respondent
rejected Complainant’s good faith offer stating that “[d]ue to traffic
throughout
and name recognition the domain name dogpile.biz is worth more then
$200.” Obtaining and holding a domain name that is identical
to Complainant’s
mark for the primary purpose of selling it for profit to Complainant is not a
bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4
(c)(iii). See J. Paul Getty Trust
v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000)
(finding rights or legitimate interests do not exist when one has made no use
of the websites
that are located at the domain names at issue, other than to
sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name
with the intention of selling its
rights); see also Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that rights or legitimate interests do not exist when one holds a domain name
primarily
for the purpose of marketing it to the owner of a corresponding
trademark)
Moreover,
Respondent has offered no evidence and there is no proof in the record, which
suggests that Respondent is commonly known
by the <dogpile.biz>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). 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 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <dogpile.biz> domain
name for the purpose of selling the domain name registration to Complainant,
who owns the DOGPILE trademark. Acquiring a domain
name that is identical to
another’s mark for the primary purpose of selling it for profit evidences bad
faith registration and use
pursuant to Policy ¶ 4(b)(i). See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where
Respondent, a domain name dealer, rejected Complainant’s nominal offer of
the
domain in lieu of greater consideration); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered
domain names for sale); see also Marrow
v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should
not “put much weight on the fact that it was the Complainant who contacted
Respondent to see if it was interested in selling the domain name”); see
also Grundfos A/S v. Lokale,
D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name
in any context other than to offer it for sale to
Complainant amounts to a use
of the domain name in bad faith).
The Panel infers that Respondent had
actual or constructive knowledge of Complainant's DOGPILE mark because the mark
is registered
with the United States Patent and Trademark Office. Registration
of a domain name confusingly similar to a mark, despite knowledge
of the mark
holder's rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Digi Int'l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ("there is a legal
presumption of bad faith, when Respondent reasonably should have
been aware of
Complainant's trademarks, actually or constructively."); see also Pfizer,
Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because
the link between Complainant's mark and the content advertised on Respondent's
website was obvious, Respondent "must have known about the Complainant's
mark when it registered the subject domain name");
see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent's registration and use of an identical and/or
confusingly similar domain
name was in bad faith where Complainant's BEANIE
BABIES mark was famous and Respondent should have been aware of it); see
also Victoria's Cyber Secret Ltd. P'ship v. V
Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001) (noting that "a Principal Register registration
[of a trademark or service mark] is
constructive notice of a claim of ownership
so as to eliminate any defense of good faith adoption" pursuant to 15
U.S.C. § 1072).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
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.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
August 2, 2004
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