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Ofoto, Inc. v. Peter Sevier / Online Forum Of Free Opinions (O.F.O.F.O.) [2004] GENDND 1212 (16 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ofoto, Inc. v. Peter Sevier / Online Forum Of Free Opinions (O.F.O.F.O.)

Case No. D2004-0460

1. The Parties

The Complainant is Ofoto, Inc., of Emeryville, California, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Peter Sevier / Online Forum Of Free Opinions (O.F.O.F.O.), of Lafayette, California, United States of America, represented by himself.

2. The Domain Name and Registrar

The disputed domain name <ofofo.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2004. On June 25, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 26, 2004, Go Daddy Software transmitted by email to the Center its verification response. The Registrar provided contact details for the Registrant’s administrative, billing and technical contacts, but disclosed that the Respondent is not the Registrant listed in the Complaint, namely Domains By Proxy. Rather, the listed Registrant is Mr. Peter Sevier. As a result, on June 28, 2004, the Center issued a Complaint Deficiency Notification directed to this discrepancy, advising that the Complaint did not provide full information on how to contact the Respondent or its representative in accordance with Paragraph 2(a) of the Rules. Complainant submitted an Amended Complaint on July 2, 2004. The Center verified on July 8, 2004, that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2004. The Response was filed with the Center on July 28, 2004.

On August 11, 2004, the Center received a Reply from Complainant in support of its Complaint. The Reply was supported by a Declaration.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on August 25, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On August 26, 2004, the Respondent requested additional time to file a Surreply with additional case documentation. On August 30, 2004, the Center issued a Panel Order granting the Respondent’s request to file a Response addressing exclusively the issues raised in Complainant’s Reply, until September 9, 2004.

Respondent filed a Surreply on September 9, 2004.

4. Factual Background

Complainant Ofoto, Inc. (“Ofoto”) provides photography products, software and services over the Internet. These services include an online digital photography lab for editing and enhancing photographs that also produces photographic prints from digital and film cameras. Complainant has established an Internet website for promotion and delivery of these services which is reached through the domain name <ofoto.com>. Complainant owns four U.S. registrations for marks which comprise or include the word OFOTO in connection with computer software, online processing, and printing of digital images.¹

Respondent operates a website linked to the domain name <ofofo.com>. At one time, that website contained information and advertisements about <shutterfly.com>, a service competing with Complainant’s service. Respondent’s website currently contains no information about this service.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it offers various photography-related products and services, including film processing and digitizing, online editing tools, picture frames, photo cards, albums and other related merchandise. Complainant asserts that through its website at <ofoto.com>, Complainant’s customers can store, share, edit, enlarge and enhance digital photographs. Complainant asserts that it has spent “substantial time, effort and money” to advertise its OFOTO mark in the United States and throughout the world, and as a result the mark has become well-known and has developed an enormous amount of goodwill. Complainant asserts that it discovered Respondent had registered the subject domain name on or about May 28, 2004, as part of its ongoing trademark enforcement program. Complainant asserts that Respondent registered the domain name on or about January 2004, and was using it to host a website that “mirrors the website of one of Ofoto’s primary competitors, Shutterfly, Inc.” Complainant alleges that the website linked to the subject domain name was almost identical in appearance to Shutterfly’s official website, and that it incorporates Shutterfly’s stylized trademark in the top left-hand corner and on five other locations on the home page. Furthermore, Complainant asserts that the website “replicates the color scheme and design layout of the Shutterfly website, includes multiple banner advertisements for Shutterfly including special offers for Shutterfly products, and contains several links to the Shutterfly website.” Complainant asserts that as of May 2004, when it discovered Respondent’s website, that website included the phrase “Already have an Ofoto account? Give Shutterfly a try and receive 15 FREE 4x6 prints, print discounts, cheaper prices and superior quality prints! Make the switch today!” Complainant’s Complaint includes a printout of the website dated May 28, 2004, which Complainant described accurately above.

Complainant asserts that its counsel contacted Respondent early in June 2004, regarding the subject domain name, and that after the contact Respondent made “minor modifications” to his site “in an apparent effort to mask the infringing nature of his website.” Complainant attached a printout from the modified website, which depicts the following modifications: it added a stylized headline reading “Welcome to OFOFO The Online Forum Of Free Opinions”; it replaced the previous phrase “Already have an Ofoto account?” with the phrase “Interested in digital prints?”; and it provided a disclaimer disclaiming association with Complainant and others at the bottom of the webpage. Otherwise, the website was unchanged.

Complainant asserts that as of June 18, 2004, the Internet tracking device on Respondent’s website indicated that over 4,000 Internet users visited his site in the two months before the Complaint was filed.

Complainant asserts that it attempted to resolve this matter without bringing contested proceedings by contacting the Registrant’s proxy server, Domains by Proxy, and by contacting counsel for Shutterfly, the company featured on Respondent’s website. Neither of these efforts achieved Complainant’s desired result. However, the current Respondent contacted Complainant’s counsel advising he was the true Registrant, that “OFOFO” was an acronym for “Online Forum Of Free Opinions”, a group that evaluates various types of products. The Registrant admitted being affiliated with Shutterfly. When Complainant’s counsel asked about the text in the website which stated “Already have an Ofoto account?”, the Respondent replied that lots of people have Ofoto accounts.

Complainant asserts that the domain name is confusingly similar because it incorporates Complainant’s OFOTO trademark in its entirety, with the exception of one letter, namely that the letter “f” replaces the letter “t”. Complainant asserts that “f” and “t” are similar in appearance and in close proximity on a computer keyboard, an additional factor supporting a finding of confusing similarity.

Complainant asserts that Respondent is a “typosquatter”, attempting to take advantage of Internet users who inadvertently misspell Complainant’s trademark as the domain name they seek. Complainant asserts that, at the least, Internet users attempting to reach Complainant’s site with the misspelling of <ofofo.com> will be initially confused, and that the high number of visitors to Respondent’s website evidences such confusion. Complainant asserts it is likely that many Internet users who arrive mistakenly at Respondent’s website will be diverted by the site’s numerous links and advertisements to the website of Complainant’s competitor, rather than continuing their search for Complainant’s <ofoto.com> website. Complainant suggests that because Respondent is an affiliate of Shutterfly, Respondent “undoubtedly receives financial remuneration for each Internet user who arrives at the Shutterfly website by way of [Respondent’s website]”.

Complainant asserts that Respondent’s disclaimer is insufficient to dispel confusion because it may be ignored or misunderstood by Internet users, and because it cannot be seen unless the user scrolls down to the bottom of the page on which the disclaimer is posted.

Complainant asserts that Respondent has no legitimate interest in the domain name <ofofo.com> because Respondent has not used and is not using the subject domain name in connection with a bona fide offering of goods or services. Complainant asserts that Respondent’s use of OFOFO as an acronym for “Online Forum Of Free Opinion” does not qualify for the exception because it was only used after Respondent was made aware of the dispute by communicating with Complainant’s counsel, and because Respondent’s use of Complainant’s mark in its domain name to divert Internet users to a site promoting products competing with Complainant’s products, does not constitute a legitimate use. Complainant asserts that Respondent appears to have registered the domain name at issue “for the sole purpose of siphoning Internet traffic away from the official Ofoto website to the Shutterfly website, and apparently for his own financial gain resulting from his affiliation with Shutterfly.”

Complainant asserts that Respondent is not making a legitimate non-commercial or fair use of the domain name because the domain name resolves to a website which is commercial and which diverts Complainant’s customers to the commercial website of one of Complainant’s primary competitors, presumably in exchange for financial remuneration.

Complainant asserts that Respondent registered and used the infringing domain name <ofofo.com> in bad faith because the very use of a famous mark in the form of a domain name by a third party suggests bad faith, and because using a domain name comprised of another’s trademark to direct traffic to a commercial website offering the sale of competing goods is “the classic example of bad faith use of a domain name.” Complainant points out that “Respondent’s website originally included a blatant solicitation to Ofoto customers to switch to its competitor Shutterfly: ‘Already have an Ofoto account? Give Shutterfly a try and receive 15 FREE 4x6 prints, print discounts, cheaper prices and superior quality prints! Make the switch today!’” Complainant asserts that this solicitation demonstrates Respondent’s actual knowledge of Complainant’s mark as well as Respondent’s recognition that Internet users may have arrived at Respondent’s website because they were seeking Complainant’s website or information about Complainant Ofoto and its products or services.

B. Respondent

Respondent asserts that he is an information technology specialist who creates and maintains information on websites in his spare time as a hobby. Respondent asserts he has operated the Online Forum Of Free Opinions since 1997, commonly known by the acronym O.F.O.F.O. Respondent claims that his organization has been in existence in various forms (e-mail, BBS, HTML, paper and spoken word) since October 1, 1997, predating Complainant’s own website at <ofoto.com>.

Respondent asserts that Complainant got its start by registering the “expired” trademark OFOTO of Registration No. 1,717,054 owned by Light Source Computer Images, Inc. and thereby “preyed upon the established goodwill of Light Source Computer Images, Inc.”

Respondent asserts that his organization was created to provide independent technology reviews to consumers and has never encountered problems with the original OFOTO owned by Light Source Computer Images, Inc. Respondent asserts that he has received visitors from around the world through word-of-mouth, e-mail and via submission to various search engines. Respondent asserts that he reviews technologies, and uses the Online Forum Of Free Opinions to offer his independent opinions of high-tech products.

Respondent alleges that Complainant brought this Complaint in bad faith and is engaged in reverse domain name hijacking, because Complainant “was in fact founded in the year 2000 on the established goodwill of Light Source Computer Images, Inc.’s previously registered OFOTO U.S. Federal Trademark.”

Respondent asserts that Complainant falsely claimed that Respondent’s site is a mirror of the Shutterfly site. Respondent states that “for approximately sixty days an associate of the Respondent did approve and post the Shutterfly advertisement, however the Respondent’s site at no time acted as a mirror as [Complainant] falsely alleges. The Respondent’s home page has always consisted of many advertisements and reviews of various technological offerings. In the last six months alone Respondent has promoted/reviewed approximately 100 different technological offerings. Respondent has never automatically redirected customers to the Shutterfly website as alleged by the Complainant, in fact the Respondent no longer offers reviews of Shutterfly’s technology on the site. The Online Forum Of Free Opinions is just that, a site of opinions and the Respondent believes he has established his right through first and continued use of the acronym O.F.O.F.O.”

Respondent’s Response included as an exhibit two undated pages from its website, each of which include the heading “O.F.O.F.O. the Online Forum Of Free Opinions – Independent Technology Reviews.” Neither of the two web pages submitted by Respondent contain any mention of either Complainant or Shutterfly. Respondent’s response included no evidence to support a 1997 first use date for any of the forms in which Respondent asserts its Forum existed: e-mail, BBS, or HTML records.

Respondent asserts that his domain name <ofofo.com> is not identical or confusingly similar to Complainant’s trademark OFOTO because “the logo [on the website linked to <ofofo.com>] is decidedly different in spelling, size, colors, imagery, slogan and is clearly an acronym. The site also displays ‘the Online Forum Of Free Opinions’ and ‘independent technology reviews’ in large red fonts.” Respondent also asserts that his website is spelled differently from Complainant’s and “customers must manually input ofofo.com to visit Respondent’s site, clearly different from [Complainant’s] site.”

Respondent asserts that he has had a legitimate right and interest in O.F.O.F.O. going back to his first use in 1997, that his first use of the acronym O.F.O.F.O. pre-dates Complainant’s own website, that Respondent has made and continues to make legitimate lawful use of the domain name at issue in connection with a bona fide offering of goods and services, and that customers and advertisers commonly refer to the Online Forum Of Free Opinions as O.F.O.F.O. Respondent has provided no evidence to corroborate the latter assertion.

Respondent asserts that he was engaged in the bona fide offering of goods and services prior to any notice of the dispute, and prior to the creation of Complainant. Respondent asserts that he continues to be engaged in the bona fide offering of goods and services, and that he is making a legitimate fair use of the domain name, without intent to tarnish the trademark or service marks at issue.

Respondent asserts he registered the domain name in good faith in order to enlighten technology consumers, and that it is Complainant “which has registered <ofoto.com> and has built an entire business in bad faith to steal the goodwill established by Light Source Computer Images, the original OFOTO trademark registrant.”

Respondent asserts he attempted to work with Complainant to resolve the dispute by removing the Shutterfly reviews from his site, that Respondent offers no services which compete with Complainant’s, that Respondent has “at various times” placed disclaimers on the site, that the domain name is not and has never been for sale, and that Respondent “manufactures opinions” and does not compete with Complainant.

Respondent requests that this Panel make a finding of reverse domain name hijacking because Respondent has “attempted to demonstrate a pattern that [Complainant’s] own service was established by the registration of a third party company’s OFOTO Registered Federal Trademark.

C. Additional Pleading

1. Complainant’s Reply

Complainant filed a Reply brief to counter Respondent’s claim of first use, asserting that Complainant “could not have reasonably anticipated” that Respondent would assert a claim that it had used the acronym O.F.O.F.O. prior to Complainant. Complainant also asserts, for the first time, that it “recently discovered that Respondent is a former employee of Complainant’s, who worked for Complainant until approximately August 2001”. Complainant asserts “there can be no question regarding Respondent’s knowledge of [Complainant’s] rights in the OFOTO mark or his intent in using a confusingly similar domain to direct Internet users to a competitor of Ofoto.”

Complainant corroborates this assertion with a Declaration of its Director of Human Resources, who states that after Ofoto filed its Complaint, its Human Resources records were checked to determine if Respondent had previously been employed by Complainant, and the records confirmed this.

II. Respondent’s Surreply

In his Surreply, Respondent asserted that he has extensive experience running e-commerce, on-line forums and adult entertainment websites, that the Online Forum Of Free Opinions was started on October 1, 1997, that Respondent has used the name in print and on the Internet to recommend various computer and technology-related products and services to consumers, that the name is unique and distinct in content and appearance and is not similar to Complainant’s website, that Complainant’s argument lacks merit, “for if true [Complainant] would be entitled to the entire computer keyboard, every similar pattern, similar sounding words, and proximity of keys on the keyboard.”

Respondent asserted that he had used the name Online Forum Of Free Opinions in conjunction with his Baylink Technologies Computer Consulting Company since 1997, four years prior to Complainant’s registered trademark, and that the name has been used in good faith for seven years since 1997 to provide computer and technology ratings and reviews free of charge to consumers.

Respondent asserts that Complainant “is not only attacking the Respondent by this WIPO procedure, since June 2004 the Respondent has incurred damages due to eight separate malicious e-mails containing computer viruses … .” Respondent’s other arguments in its Surreply repeat arguments already made in his Response.

6. Discussion and Findings

A. Consideration of the Parties’ Additional Pleadings

It is in the Panel’s sole discretion to request further statements or documents from the parties beyond the Complaint and the Response (Rules, paragraph 12). No party has the right to submit additional evidence. SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. However, it is appropriate to consider the circumstances of each case before deciding whether the Panel should consider additional submissions. Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802.

The Panel finds that Complainant’s argument in its Reply was directed mainly to Respondent’s evidence submitted with its Response. The Panel finds Complainant’s arguments on this issue are well-taken. Complainant submitted with its Complaint printouts of Respondent’s website, each bearing dates on which the printout was made, showing the progression of Respondent’s website as first containing promotional material for Shutterfly, directed to Ofoto customers; then containing promotional material for Shutterfly without mention of Ofoto, but adding a reference to OFOFO – the Online Forum Of Free Opinions; and finally deleting any mention of Shutterfly.

Respondent’s evidence, on the other hand, included an undated printout of a website which bore a copyright notice from 2004. Respondent provided no other evidence to corroborate its claim of use since 1997, not even a certification of its own statements. Indeed, Respondent sought to file a Surreply against Complainant’s attacks on its evidence, seeking additional time to file a Response and “additional case documentation.” Respondent’s Surreply included no evidence to corroborate Respondent’s claim of use since 1997.

This Panel shall not consider Complainant’s assertion in its Reply, and attached declaration, that Respondent was previously employed by Complainant. Complainant clearly had communications with Respondent prior to filing the Complaint, and had the opportunity to search its employment records and include these facts with its Complaint. Complainant gave no explanation why this information could not have been submitted with the Complaint.

Similarly, this Panel shall give no consideration to Respondent’s argument in its Surreply that Complainant seeks to monopolize the computer keyboard, since it could – and should – have been raised in Respondent’s initial Response.

B. Applicable Policy Provisions

The Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Policy, paragraph 4(a)

It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith

(i) circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or

(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other Online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

Policy, paragraph 4(b). These circumstances are non-inclusive, and the panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4(c).

C. Opinion of the Panel

1. Is the domain name identical or confusingly similar to a trademark in which Complainant has rights?

This Panel finds the domain name <ofofo.com> is confusingly similar to Complainant’s OFOTO trademarks. The domain name differs from Complainant’s trademarks by a single letter, substituting an “f” for a “t”. These letters are similar in appearance, and are directly adjacent on a computer keyboard. Indeed, they are both typed with the same finger. Not only are the words likely to be confused by their appearance, they are likely to be confused by a typist whose finger hits the wrong key.

2. Does Respondent have no rights or legitimate interests in the domain name?

This Panel finds not credible Respondent’s unsupported assertions that it began using the term O.F.O.F.O. as an acronym for the Online Forum Of Free Opinions in October 1997. Despite asserting that the Forum appeared in several different media, including e-mail, BBS, HTML, paper or spoken word, the only evidence of its use which Respondent submitted was an undated printout from its website. This website bore a copyright notice dated 2004, certainly insufficient to establish the existence of an Online Forum Of Free Opinions in 1997. Respondent had not one but two opportunities to provide credible evidence that it began using its phrase in 1997, but failed to do so. The only documentary evidence establishing a date of use for the Online Forum Of Free Opinions is its copyright notice of 2004.

To the contrary, Complainant established credibly and with corroborating evidence that prior to notice of this dispute, Respondent’s website contained no reference whatsoever to the Online Forum Of Free Opinions, but only to Complainant’s competitor Shutterfly. Respondent has failed to establish rights or legitimate interests in the domain name.

3. Was the domain name registered and used in bad faith?

Complainant presented clear evidence that Respondent’s activities fall under Paragraph 4(b)(iv) of the Policy, namely that by using the domain name, Respondent has intentionally intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

The uncontroverted evidence shows that prior to notice of this dispute, Respondent’s domain name <ofofo.com> resolved to a website referring solely to Complainant’s competitor Shutterfly, and containing links to Shutterfly’s website. That Respondent’s website was directed toward Complainant’s customers, and not generally to those seeking “free opinions” about high technology products, was clear from Respondent’s prominent use of the phrase “Already have an Ofoto account? Give Shutterfly a try…”. Respondent’s website was devoid of any mention of an “Online Forum Of Free Opinions” until after Complainant contacted Respondent.

The evidence shows that Respondent’s website was designed to lure typosquatters seeking Complainant’s OFOTO website into trying the services of Complainant’s competitor. This is evidence of bad faith, as defined in the Policy.

4. Has the Complainant engaged in reverse domain name hijacking?

Respondent’s assertion that Complainant committed reverse domain name hijacking is based upon a misunderstanding of trademark law. Respondent asserts that by adopting and seeking to register the trademark OFOTO, Complainant poached upon the rights of a prior trademark registrant, Light Source Computer Images, Inc. The records of the U.S. Patent and Trademark Office show that by the time Complainant filed its application to register the mark OFOTO, Light Sources’ Registration No. 1,717,054 had already expired. Even if it had not, the fact that Complainant possesses not one, but several issued registrations for its mark OFOTO defeats Respondent’s argument. Complainant’s Federal registrations are prima facie evidence of the validity of its mark. See 15 U.S.C. §1057(b). The place for Respondent to test the validity of Complainant’s Federal Trademark Registrations is before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, or in a federal district court. This Panel declines Respondent’s invitation to find Complainant a reverse domain name hijacker.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ofofo.com> be transferred to the Complainant.

Jordan S. Weinstein
Sole Panelist

Date: September 16, 2004

1To corroborate its assertion that it owns four registrations for its mark, Complainant attached a printout from the United States Patent and Trademark Office’s TESS system. However, Complainant included only the summary page, providing the marks, numbers and status, but lacking the recitations of services. While this Panel was able easily to obtain this information from the USPTO’s TESS database, it would have been preferable for Complainant to submit the individual records for each registration, obviating this additional factual investigation for the Panel.